23 May 2018

It’s Not Fair

Although unfair competition laws are not harmonized in the European Union, a shared understanding of what constitutes “behaving in an unfair manner in commerce” underpins the national law of many European countries, according to Marina Perraki, Partner at Tsibanoulis & Partners Law Firm (Greece).

Speaking yesterday at CT22: Protecting Unregistered Marks via Passing Off and Unfair Competition: Reputation Versus Goodwill (and Everything In-Between), Ms. Perraki explained that EU law does not oblige members to provide protection for unregistered rights.

However, when it comes to clashes between unregistered and registered rights, they are “equivalent in power” and can therefore be resolved on a priority basis, Ms. Perraki added.

In order for an unregistered mark to be protected in Greece the use of that mark must be proven. That is “how you acquire an unregistered right,” Ms. Perraki said, and an element of confusion must also be shown in order to succeed in an unfair competition law claim.

Though the relevant use must take place in Greece, the person or entity concerned does not have to be present or established in the territory. Ms. Perraki said it suffices that the unregistered mark has been active commercially, for example, through an agent or via the Internet.

Ms. Perraki noted that, in contrast to “other jurisdictions, reputation need not be proven for an unfair competition law claim to succeed.”

Myrtha Hurtado Rivas, Global Head Trademarks & Domain Names at Novartis International AG (Switzerland), said it is “interesting that, unlike Greek law, which explicitly refers to use, in Switzerland this is not the case” in the context of unfair competition law.

“In Switzerland, the door is open for claiming unfair competition behavior even though the unregistered right has not been used yet,” she explained, and this works in favor of a pharmaceutical company like Novartis.

Ms. Hurtado Rivas said there is sometimes the need to claim unregistered rights “immediately after the launch of a product or even before, when the product is submitted to health authorities,” which means that proving “use” would be a near impossible task.

Like Greek law, Swiss law also makes reference to confusion, but it is not a required element of an unfair competition claim, Ms. Hurtado Rivas noted. Confusion, and “whatever other behavior which may unfairly impact competition,” can be used to substantiate a complaint.

Also on the panel was Anna Carboni, Partner at Wiggin LLP (UK), who spoke about the “very flexible” concept of passing off and misrepresentation under UK law.

Peter Chalk, Partner at Ashurst (Australia), explained that actual trading activity in Australia is not required to establish the tort of passing off; instead, it’s necessary to “demonstrate a reputation among consumers” in the country.

Yesterday’s debate was moderated by Carlo Sala, Owner at Studio Associato (Italy).

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