LAWSG186 Trade Marks and Unfair Competition in the UK, Europe and the United States

Credit value: 30 credits (15 ECTS, 300 learning hours)
Convenor: Ilanah Fhima
Other Teachers: None
Teaching Delivery: 20 x 2-hour weekly seminars, 10 seminars per term, Term One and Two
Who may enrol: LLM students only
Prerequisites: None
Must not be taken with: None
Qualifying module for: LLM in Comparative Law
LLM in Intellectual Property Law
Introductory video
Practice Assessment: Opportunity for feedback on one optional practice essay per term (two in total)
Final Assessment: One 3-hour unseen written examination (100%)
Module Overview
Module summary:

This module considers registered trade mark law and unfair competition from a comparative perspective. It covers the nature and justifications for trade mark protection, subject-matter of protection, scope of protection and topical issues in trade mark law and unfair competition. The module focuses on European, UK and US law, drawing on international and other national jurisdictions where relevant.

The module is intended to equip students with a thorough understanding of unfair competition and registered trade mark law in the UK, EU and the United States. It also introduces social, economic and historical issues in the field of trade marks, as well as international law in the field of trade marks. It will be taught thematically to give students the ability to appreciate the differing (and in many cases similar) approaches taken to shared issues in the US and Europe.

Module syllabus:

  1. Introduction to trade marks and unfair competition
  2. History
  3. Economics
  4. International obligations
  5. European and US system overview
  6. Unfair competition: basic structure & qualifying for protection
  7. Unfair competition: forms of harm – confusion
  8. Unfair competition: forms of harm – misappropriation
  9. Unfair competition: forms of harm – dilution
  10. Registered trade marks: introduction & graphical representation requirements
  11. Registered trade marks: descriptiveness and distinctiveness
  12. Registered trade marks: functionality
  13. Registered trade marks: infringement
  14. Registered trade marks: infringement via confusion
  15. Registered trade marks: infringement in the absence of confusion
  16. Registered trade marks: trade mark use
  17. Registered trade marks: defences
  18. Registered trade marks: use requirements and other death of trade mark issues
  19. Parallel importation
  20. Internet issues
  21. Trade marks and free speech
  22. Comparative advertising
  23. Plain packaging
  24. Revision
Recommended materials:

US Law:

  • Beebe, Trade Mark Law: an Open Source Casebook
  • Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (WEST, 4th edition, 1998-2016) – available through Westlaw on the International tab
  • Boyle & J. Jenkins, Intellectual Property: Law & the Information Society (Centre for the Study of the Public Domain, 2016) (open source)

The course will draw heavily on articles by leading US academics, including Rebecca Tushnet, Mark Lemley, Mark McKenna, Barton Beebe, Graeme Dinwoodie – these are all available through Hein Online

Cases are available through Westlaw International, as well as extracted in the case book.

EU/UK Law:

There are many general textbooks covering all aspects of IP law, which include comprehensive coverage of European trade mark law. The best of these is probably Bentley & Sherman, Intellectual Property (OUP, 4ed, 2014)

  • von Muhlendahl et al, Trade Mark Law in Europe (OUP, 3ed, 2016)

Relevant journals include the IIC, European Intellectual Property Review, Journal of Intellectual Property Law and Practice and Intellectual Property Quarterly – all are available to UCL students through either Westlaw or direct library subscription

Trade Marks Generally:

  • N.Lee et al, Intellectual Property Unfair Competition and Publicity Convergences and Development (Elgar, 2014)
  • Griffiths, An Economic Perspective on Trade Mark Law (Elgar, 2011)
  • Bodewig, International Handbook on Unfair Competition Law, Beck/Hart/Nomos, München/Oxford/Baden-Baden 2013, XXXIV + 653 pp.
  • Fhima, Trade Mark Dilution in Europe and the United States (OUP, 2011)
  • Firth et al, Trade Marks and Competition Law (OUP, 2017)
  • Kur & M. Sentefleben, European Trade Mark Law (OUP, 2017)
  • I Fhima & D. Gangjee, The Confusion Test in European Trade Mark Law (OUP, 2017)
  • Dornis, Trademark and Unfair Competition Conflicts (CUP, 2017)
  • Bently et al, Trade Marks and Brands: an Interdisciplinary Critique (CUP, 2011)
  • Balganesh, Intellectual Property and the Common Law (CUP, 2015)
  • Dreyfuss et al, Intellectual Property at the Edge: the Contested Contours of IP (CUP, 2014)
  • Desai et al, Brands, Competition Law and IP (CUP, 2015)

Module reading lists and other module materials will be provided via online module pages, once students have made their module selections upon enrolment.

Preliminary reading:

  • Bentley & Sherman, Intellectual Property (OUP, 4ed, 2014)
  • Blackstone’s Statutes on Intellectual Property (latest edition
  • Beebe, Trade Mark Law: an Open Source Casebook