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ACTS OF UNFAIR COMPETITION RELATED TO IP

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The acts of unfair competition in industrial property refer to the acts related to the use, the enjoyment and the protection of the industrial property rights. These rights are defined as the set of rights that an individual or legal entity can own over a new creation, or over a distinctive sign. The former include the patents of invention, the utility models, the industrial designs and the integrated circuit layout designs; the latter comprise the brands, the slogans, the commercial names and ensigns, and the indications of origin.

The Community’s regulation establishes that it will be considered as unfair any act linked to the industrial property done in the market, with concurrence purposes, that is contrary to the honest uses and practices, and lists some examples. The foregoing evidences that there is not a restrictive list that contains the acts of unfair competition, but that the legislator contemplated a number of situations capable of causing damages to a given competitor, as well as to the consumer public.

Among the cases considered by the provision we can find: the false statements, in the exercise of the commercial activity, capable of discrediting the competitor’s product, or the competitor himself; the false indications or asseverations capable of inducing the public to error regarding the nature, the manner of fabrication, the characteristics of the product, and in general, any act capable of creating confusion regarding the products or the commercial activity of a competitor.

About the acts of confusion, it is important to point out that the same are not exactly referred to the analysis of confusability of the signs, which falls within the orbit of the trademarks’ law as such, but seeks to determine whether or not such acts can cause confusion in the consumers regarding the establishment, the products or the economic activity of a specific competitor. The foregoing can take the form of small deceptions, false statements, the forwarding of information, imitation of packages, misleading advertising, etc. Hence, the fact of using a distinctive sign of others to pass it off as its own, is an unfair practice.

On the other hand, the false asseverations regarding the products of others, in respect of the businessman as such or related to its commercial conditions, are considered as an act of commercial discredit, which has been also classified as unfair. An example thereof is the publicity that compares the person’s own product against the product of a competitor, utilizing incorrect or false statements, the effect of which is to discredit him before the consumer public. Also considered as unfair are the asseverations that could induce the public into error regarding the nature, the manner of fabrication, the characteristics, etc. of the products.

In the same sense, the Community’s provisions state that the application to register a brand with the purpose of perpetrating, facilitating or consolidating an act of unfair competition, must be denied in order to safeguard the interest of the consumers and the affected competitor. For this, the judge must at least have reasonable indications of the possible dishonest practice.

Within this framework, it can be concluded that if a competitor requests the registration of a brand with the purpose of causing confusion in the market, and as such, with the possibility or the intention of causing damages to another competitor, it would be faced with the aforementioned cause of non – registrability. In that sense, the analysis required from the competent authority must be based on “reasonable indications” that allow it to conclude that the registration was made in “bad faith”, and that it could harm another competitor in the market.

Taking the foregoing into account, it is clear that the relationship between the unfair competition and the industrial property is evident, as it has been determined that the intangibles assets are susceptible of being the subject of unfair competition acts and, in many cases, of being utilized to perpetrate, facilitate or consolidate the commission of these acts.


LA REPÚBLICA

Author: Sara Merizalde