Institute of Brand and Innovation Law

Institute of Brand and Innovation Law

CPD Course: International and Comparative Law of Trade Marks, Designs, and Unfair Competition

About this course:

The course examines the laws of trade marks and unfair competition in at least the UK, USA and EU, as well as the many international aspects. Looking at "hot topics" in the area, it compares and contrasts the ways in which different jurisdictions approach the hard questions concerning brands (in the widest sense) and the public interest. Additionally, the course looks at the vexed issues in the law covering designs.

This course is held on Fridays from 2-4pm
Teaching on Dr Ilanah Simon Fhima (UCL), Prof. David Llewelyn (KCL), and Prof. Spyros Maniatis (QMUL)

Course Schedule

Introduction and Functions of Trade Marks
Historical aspects, economic function of trade marks, introduction to the quality guarantee and advertising functions.
International systems & Introduction to Unfair Competition
International law as it applies to trade marks, Paris Convention, Madrid Agreement, TRIPs Agreement, key themes in unfair competition
Passing Off I
Elements of the action: goodwill, misrepresentation, damage
Passing Off II
Extending the reach of passing off: extended passing off after the Advocaat case, foreign goodwill, prospects for a general tort of unfair competition
US Unfair Competition: Confusion
Introduction to the Lanham Act, overview of §43, development of the confusion action in the US, types of confusion, test for confusion
US Unfair Competition: Misappropriation
Justifying a misappropriation action, the INS case, the response to an action for 'reaping without sowing', preemption and the overlap with other IP rights, contemporary cases on misappropriation
US Unfair Competition: Dilution
Meaning of dilution, Schechter's article, the Federal Trademark Dilution Act 1995 and its problems, the response: the Trademark Dilution Revision Act 2006, elements of today's dilution action in the US
French Unfair Competition
History of the action, its place in the French Civil Code, proving concurrence déloyale, parasitism
German Unfair Competition
History of the action, introduction to the UWG, reform of the UWG, overview of activities actionable under the revised UWG (including confusion, misappropriation of reputation and slavish imitation)
Europe: Registered Trade Marks I. Absolute Grounds
Graphic representation and non-traditional marks, distinctiveness, descriptiveness, generic marks, acquired distinctiveness, functionality
Europe: Registered Trade Marks II. Relative Grounds and Scope of Protection
Double identity, confusion-based infringement, dilution and unfair advantage
Europe: Registered Trade Marks III Infringement
Trade mark use issues, making sense of the conflicting Court of Justice case law: Arsenal, Adam Opel, O2 and Google, trade mark use on the internet
Europe: Registered Trade Marks IV, Defences Revocation and Invalidity
Own name defence, descriptive use, the honest practices provisio, revocation for non-use or genericity, invalidity
US: Registered Trade Marks I
Registrability; The use requirement, non-descriptive marks and the Abercrombie test, non- traditional marks, trade dress, functionality
US: Registered Trade Marks II
Scope of protection, infringement & defences. The test for confusion, types of confusion (including post-sale and initial interest confusion), the fair use defence, infringement on the internet
Special Topics: Trade Marks and Freedom of Speech - Parody
The meaning of parody and its place in free discourse, introduction to free speech protection in the EU and US, identifying the conflicts with trade marks, how well have the courts and legislators balanced free speech and trade marks?
Special Topics: Trade Marks and Freedom of Speech - Comparative Advertising
What is comparative advertising?, benefits of comparative advertising for traders and consumers, regulation of comparative advertising in Europe, regulation of comparative advertising in the US
Trade Mark/Design Interface
Identifying the overlaps between design protection and trade mark protection - new strategies for protecting product features, protection of designs in Europe and the UK: registered and unregistered rights, US design patents
Parallel Importation I: US
The legislative framework, territoriality and the presumption against parallel importation, the common origin doctrine, the material different in quality rule
Parallel Importation II: EU
European law and the free movement of goods: the role of parallel importation, exhaustion of rights and the differential treatment of goods from the EEA and those from elsewhere, repackaging, other legitimate reasons to oppose the resale of goods
Geographical Indications
Should geographical indications be protected? Protecting geographical terms though registered trade marks and unfair competition, international protection, the EU regime protecting geographical indications


Download the Brochure for the UCL IBIL IP cpd courses for the 2011-12 session