Protecting Unregistered Marks via Passing Off and Unfair Competition: Reputation Versus Goodwill (and Everything In-Between)
Recorded On: 05/22/2018
Pre-recorded from INTA's 2018 Annual Meeting.
Regarding the decision by the UK Supreme Court in the Starbucks (HK) case, the common law approach to reputation vs. goodwill and its implications for passing off will be discussed, including:
- Overview of the Starbucks (HK) case, including the common law test for passing off under UK law.
- Why the common law distinguishes between reputation and goodwill and what the substantive differences are between them?
- Should the online environment require a reconsideration of the common law rule?
- The diversity in treatment between reputation vs. goodwill in other common law jurisdictions (such as Australia, New Zealand, and the United States); where they agree with the UK approach and where they don’t.
- The civil law approach to these questions, focusing on Europe:
- Does the distinction between reputation and goodwill apply or are there other appropriate legal constructs?
- How do these legal constructs play out in an action for unfair competition or Paris Convention 6bis/well-known marks?
- Is use within the jurisdiction considered a requirement for protection?
- Are there other possible causes of action?
- Implications for practice, including strategic considerations, case management, and evidentiary requirements.