Legal or illegal replica goods – where is the line drawn?
The Norwegian Marketing Control Act section 30 prohibits use of replica goods in the course of trade, if it will constitute an unfair exploitation of the efforts or results of another person, and likelihood of confusion with that person's goods. The statement of the Norwegian Council dealing with unfair marketing practices (in Norwegian: Næringslivets Konkurranseutvalg, hereafter referred to as the "NKU") in case no. NKU 2020-9 illustrates how marketing and sale of replica goods does not necessarily cause likelihood of confusion with the original product under the Marketing Control Act Section 30.
By Jenny Nondal & Thomas Hagen
Case no. NKU‑2020-9 was between Slettvoll Møbler AS (the "Plaintiff") and Møbelringen AS (the "Defendant"). The Plaintiff claimed that the Defendant's armchair "Celine" (pictured below to the right) (the "Defendant's Armchair"), was an illegal replica of the Plaintiff's armchair "East" (pictured below to the left) ("Plaintiff's Armchair"), in violation of the Marketing Control Act Section 30.
The NKU considered whether the Defendant's Armchair was a copy of the Plantiff's Armchair and constituted an unfair exploitation of the Plaintiff's efforts or results, causing likelihood of confusion between the Plaintiff's Armchair and the Defendant's Armchair.
The NKU stated that the sharp shape of the Plaintiff's Armchair, with the arched back and dominating corners, made the Plaintiff's Armchair distinctive. Moreover, the NKU stated that the Defendant had intended to imitate the Plaintiff's Armchair and market and sell the imitation at a lower price.
However, the NKU majority concluded that the Defendant's Armchair did not give the same overall impression as the Plaintiff's Armchair. The majority referred to the sharp expression of the Plaintiff's Armchair, with low armrests and a deep, arched back with dominating corners surrounding the person sitting in the chair, and the softer expression of the Defendant's Armchair, with higher armrests, a straighter back with smaller corners and pillow to sit on.
The majority stated that the price difference between the two armchairs prevented consumers from confusion the two armchairs, making it evident for the consumers that the Defendant's Armchair was a cheaper alternative to the Plaintiff's Armchair, even though the armchairs were designed in the same type of style.
Thus, the NKU concluded that the Defendant's Armchair did not violate the prohibition against replica products in the Marketing Control Act Section 30.
The NKU statement illustrates how some adjustments in the design process and different prices can prevent likelihood of confusion, even though the products as such are quite similar. One can argue that the statement constitutes an easing of NKU's practice under the Marketing Control Act section 30, compared to other recent statements from NKU, e.g. in case no. 2020-2.