The 'Consumer Protection from Unfair Trading Regulations 2008' (CPRs), which implement the Unfair Commercial Practices Directive (Directive 2005/25/EC) into UK law, came into force on 26 May 2008. The CPRs are of interest with respect to trade marks as the UCP Directive specifically prohibits the marketing of look-a-like products, which could confuse or mislead consumers. The CPRs amend the Consumer Protection Act and the Trades Description Act and replace and revoke the Control of Misleading Advertisements Regulations. The rationale behind the Directive and the CPRs alike is to protect consumers against unfair, misleading or aggressive marketing practices.

Unfair, misleading or aggressive practices

As such, the CPRs include a general prohibition, which sets out that a commercial practice is unfair if it is not professionally diligent, and it materially distorts, or is likely to materially distort, the economic behaviour of the average consumer. The CPRs further prohibit misleading actions and misleading omissions (regulations 5 and 6): commercial practices are prohibited as misleading actions if they market a product in a way which creates confusion with any products, trade marks, trade names or other distinguishing marks of a competitor, and the average consumer takes, or is likely to take a transactional decision he would not have otherwise taken. A practice can mislead by action or omission or both. Aggressive commercial practices (regulation 7), which in the context of the particular circumstances, intimidate or exploit consumers, restricting their ability to make free or informed choices are also prohibited. The "typical consumer" is taken to be reasonably well-informed and reasonably observant, however, if vulnerable groups such as children are targeted, then this will be taken into account when assessing the typical consumer. The CPRs also cover breaches of professional diligence, which are likely to materially distort a typical consumer's economic behaviour. "Professional diligence" is defined as the standard of special skill and care which a trader may be expected to exercise.

Blacklist of 31 unfair practices (including "copy-cat packaging")

In addition, the CPRs contain a blacklist (Schedule 1) of 31 commercial practices that are always considered to be unfair and thus prohibited. Evidence of their effect, or likely effect, on the average consumer is not required in order to prove a breach of one of the outright prohibitions.

One of the practices included in the blacklist is “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 that same manufacturer when it is not", i.e. cases of copycat packaging or marketing, look-a-like products. This provision is of particular interest to brand owners that want to take action against look-a-like products and copy-cat packaging. Given that the UK has no specific unfair competition law (as opposed to countries like Germany), brand owners so far had to rely on their intellectual property rights (trade marks, designs or copyright and the law of passing off), which has often been regarded as inadequate.

Further included in the blacklist are practices such as:
- Displaying a trust mark, quality mark or equivalent without having obtained the necessary authorisation;
- Using editorial content in the media to promote a product where a trader has paid for the promotion without making that clear in the content or by images or sounds clearly identifiable by the consumer (advertorial);
- Claiming that a code of conduct has an endorsement from a public or other body which it does not have.

Consequences and enforcement

Local Authority Trading Standards Services (TSS), the Department of Enterprise, Trade and Investment in Northern Ireland and the Office of Fair Trading (OFT) have a duty to enforce the CPRs. Breaches of the CPRs will be enforced through enforcement orders, and criminal prosecutions. The UCP Directive does not specify how its provisions should be enforced in its member states. In the UK consumers and brand owners that are affected by a breach of the regulations do not have the right to bring a claim for compensation or to take legal action but have to make a complaint with at the relevant TSS or OFT. The Gowers Review of IP already recognised in 2005 that English law only offered limited protection against copycat packaging and look-a-like products and recommended that future measures implementing the Directive 2005/25/EC should be monitored whether they could successfully deal with this type of unfair competition. The UK government decided that the measures together with the rights of the OFT and TSS, were sufficient to enforce the provisions but this would be reviewed after three years.

The situation is different in countries like Germany, where the Directive is directly applicable and allows claimants to argue their cases in (civil) courts. The fact that in German courts (see Class46 post of 12 March 2008) have discussed whether using a competitor’s mark as a hidden keyword/"AdWord" could in certain constellations amount to a misleading practice under Article 6(2)(a) of Directive 2005/25/EC, serves to illustrate that the provisions of the Directive - and of the CPRs - might not only apply in look-a-like cases but could become relevant in a much wider trade mark context.

The Unfair Commercial Practices Directive can be retrieved here; the CPRs can be retrieved here. Further information and sources of this post are information provided by the Office of Fair Trading which is also the source of the above chart, BERR: analysis scope of the unfair commercial practices directive; Implementation of the Unfair Commercial Practices Directive: Government response; legal bulletins from law firms Browne Jacobson; Lovells and Pinsent Masons.

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