Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?

Legal context. This article addresses the scope of the tortof passing off in English common law. Key points. The scope of passing off has traditionally beenlimited to confusion at the point of sale. Developments in marketpractice and trade mark law may argue in favour of extendingthat scope to cover both pre- and post-sale confusion. However,such an extension raises commonly voiced concerns about theintroduction of a general tort of unfair competition into Englishlaw. This article considers the specific issue of pre-sale confusionand concludes that there is both the need and the scope to bringit within reach of passing off. To do so would not amount tothe introduction of a general tort of unfair competition, butwould be entirely consistent with the rationale which has alwaysbeen the foundation for the tort. Practical significance. The conclusion advocated in this articlewould expand the range of conduct on which passing off claimscould be based and would increase the protection afforded tothe owners of famous brands.     

Post-sale confusion

Legal context: Recent case law has established that post-sale confusion isrelevant to determining whether registered trade mark infringementhas occurred under UK law. This raises questions as to whatthat relevance is in practice and as to whether the common lawof passing off should develop accordingly so as to take post-saleconfusion into account. Key points: In this article, the authors review the case law on the relevanceof post-sale confusion to actions for trade mark infringementand passing off. They conclude that U K law does regard post-saleconfusion as relevant to trade mark infringement, provided thatthere is also sufficient similarity on a mark-for-sign basisat the point of sale. They argue that the tort of passing offshould develop in the same way. Practical significance: Brands can be harmed even where there is no confusion at thepoint of sale. The law's development to recognize this providesimportant weapons for brand owners, particularly in the contextof ‘look-alike’ products.     

Regulation and brand value

Legal context. IP rights are dependent on the public policyconsiderations which provide the justification for their granting.However, when regulation impacts on the exercise of IP rights,there is often a clash of public policy considerations. Key points. This article considers what happens when that clashoccurs, concluding that, in all cases, IP rights will be trumpedby the public policy considerations which underlie the regulation,often with no basis for claiming compensation notwithstandingthe obvious and very real economic impact on the rights owner.Unfortunately, the markets do not always take this risk intoaccount when valuing premium brand companies. Practical significance. This conclusion may have serious implicationsfor premium brand companies, especially in heavily regulatedfields like alcohol, food, pharmaceuticals, and tobacco.     

The search engine's dilemma: implied licence to crawl and cache?

A German court rules that web publishers who choose not to usewidely available technical protection measures, such as therobot exclusion protocol (robot.txt), grant an implied licenceto search engines to crawl and cache for the purpose of indexingcontent on the internet.