Lookalikes: Can Telling the Truth be Unfair? Anna Carboni, Powell Gilbert LLP Fordham IP Law Institute 19 th Annual Conference: IP Law & Policy

L’Oréal v Bellure “Does trade mark law prevent [traders] from telling the truth?”

L’Oréal v Bellure

PRODUCT APRODUCT B

Unfair Commercial Practices Directive Article 2: A commercial practice shall be unfair if: a)it is contrary to the requirements of professional diligence, and b)it materially distorts or is likely to materially distort the economic behaviour with regard to the product of the average consumer whom it reaches or to whom it is addressed…

Unfair Commercial Practices Directive ‘to materially distort the economic behaviour of consumers’ means using a commercial practice to appreciably impair the consumer’s ability to make an informed decision, thereby causing the consumer to take a transactional decision that he would not have taken otherwise.

Unfair Commercial Practices Directive ‘professional diligence’ means that standard of special skill and care which a trader may reasonably be expected to exercise towards consumers, commensurate with honest market practice and/or the general principle of good faith in the trader’s field of activity.

British Brands Group Research 2009  65% said similar packaging can be confusing  38% had been confused or misled  33% had bought the wrong product  Similar packaging “calls to mind” the familiar brand  Positive correlation between similar packaging and ­belief that the products come from the same source ­belief the mimic could be bought by mistake ­the likelihood of buying the product (i.e. increased appeal)

1990s s

Unfair Commercial Practices Directive Recital 8: This Directive directly protects consumer economic interests from unfair business to consumer commercial practices. Thereby, it also indirectly protects legitimate businesses from their competitors who do not play by the rules in this Directive and thus guarantees fair competition in fields coordinated by it.

What is unfair? “All free-riding is unfair.” [2010] EWCA Civ 535, per Jacob LJ

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