Who: The Department for Business Innovation and Skills (“BIS”)
When: April 2014
Law as stated at: 8 May 2014
BIS has launched a consultation on introducing a right for traders to take injunctive action against “lookalike” packaging. The right would be under the Consumer Protection from Unfair Trading Regulations 2008 (the “CPRs”) and would enable traders to individually and directly seek injunctions where an entity markets a product with packaging which has the look and feel of the former’s brand.
The main rule against copycat or lookalike packaging is set out in the CPRs, A commercial practice is deemed misleading and therefore prohibited under the CPRs if “it concerns any marketing of a product (including comparative advertising) which creates confusion with any products, trade marks, trade names or other distinguishing marks of a competitor” (Regulation 5(3)(a) of the CPRs.
There is also “always unfair” commercial practice #13 in Schedule 1, which creates effectively a strict liability criminal offence and reads:
“Promoting a product similar to a product made by a particular manufacturer in such a manner as deliberately to mislead the consumer into believing that the product is made by the same manufacturer when it is not.”
Currently the consumer protection regulators (the Competition and Markets Authority and Trading Standards) have the power to enforce the CPRs under the CPRs and Part 8 of the Enterprise Act 2002.
However, when drafting the CPRs it was decided that traders should not themselves have the right to take civil injunctive action in respect of copycat packaging. If traders wish to prevent the actions of third parties using copycat packaging through direct action, traders only have the right to do so through IP infringement and passing off claims, or a combination of those.
Why BIS is considering a change
So why is BIS considering a change in position now? Several factors are listed in the call for evidence including the following:
- some brand owners believe that the enforcement authorities have not provided sufficient resource to deal with lookalike packaging and don’t prioritise it against other consumer protection issues; and
- allowing such private enforcement would shift enforcement costs away from the current regulators.
The consultation opened on 11 April and responses are required by 19 May 2014. Following this consultation period, BIS proposes to produce an interim report by July and final report on the matter by September. The link to the consultation document is as follows.
Why this matters:
For marketers, having a right to seek an injunction against copycat packaging would provide a direct route for protection of their brand in this area, rather than relying on a weaker mix of IP infringement and passing off claims. Marketers would no longer need to persuade the current enforcement authorities to act on their interests in this respect and could take more control of their brand protection strategies.