Copycat packaging – time for reform?

02 June 2014. Published by David Cran, Partner, Head of IP & Tech and Ben Mark, Partner

The Trading Standards Institute (TSI) has opposed the basis of a consultation by the Department for Business, Innovation and Skills (BIS) on whether to grant a private right of action to businesses that fall victim to copycat packaging.

The current regime

The Consumer Protection from Unfair Trading Regulations 2008 (CPRs) criminalise unfair commercial practices, including conduct that amounts to a "misleading action". Under the existing CPRs, local authority trading standards are designated to act as "specified enforcers" to whom businesses can report unlawful copying of package designs. The specified enforcers are then responsible for prosecuting the infringing parties.

Currently, the CPRs do not provide businesses with a private right to enforce its provisions in the civil courts; the right to pursue a wrongdoer under the CPRs is exclusively reserved for specified enforcers.

BIS consultation

The BIS consultation had requested industry opinion on whether aggrieved businesses should be afforded the power to privately enforce the "misleading packaging" provisions contained within the CPRs through the civil courts. This would supplement the private rights of action for trade mark infringement and/or passing off, to the extent available.

The response from TSI

In an open letter to BIS, TSI stated that the reforms contained within the consultation could prejudice smaller companies, who may not be able to afford the costs of a private civil action. The existing legislation provides a level playing field for businesses, as once an infringement has been reported the costs of pursuing a wrong-doer are borne by the "specified enforcer".

The consultation period ended on 19 May 2014. BIS will publish a final report in September 2014. 

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