Comparative Advertising

Open season?

Recent decisions in the UK and European courts have restricted the use of trade mark law to resolve comparative advertising disputes, making it easier for an advertiser to use a competitor's trade mark in its own adverts. Such disputes should now be dealt with under the Misleading and Comparative Advertising Directive, but brand owners believe this provides them with a far less rigorous mechanism of enforcement and redress. So, what has happened to bump the challenging legal field of comparative advertising out of the arena of trade mark law? Georgie Collins takes a closer look at the two cases in question.

02 and Hutchinson 3G (2008)

Hutchinson 3G was a late entrant to the mobile phone market. In asserting itself in the market it launched an advertising campaign which compared its cheaper pre-pay service to those of its rivals 02, T-Mobile, Vodafone and Orange. 02 owns a number of trade marks but of relevance in this case was its registrations for a range of 'bubble' images.

The 3G ad in question used the word "02" together with moving pictures of bubbles. Whilst 02 did not claim that 3G's advert was misleading, it sued for trade mark infringement in the UK claiming that the images were confusingly similar to its own bubble image trade marks. 3G defended saying that its advertisement complied with the Misleading and Comparative Advertising Directive ("the Directive") which sets out the criteria that comparative adverts must meet to be permitted.

The Directive requires that the advert:

1. must not be misleading;

2. must objectively compare goods or services meeting the same needs or intended for the same purpose;

3. must objectively compare features of the goods including prices;

4. must not discredit or denigrate the trade marks or other activities or services of the competitor;

5. where it relates to products with a designation of origin, relates only to products with the same designation;

6. must not take unfair advantage of the competitor's trade mark or its reputation;

7. must not present the goods or services as imitations or replicas of those bearing the trade mark; and

8. must not create confusion between the advertiser and trade mark owner.

3G claimed its advertisement fell squarely within the above criteria. The High Court agreed and dismissed O2's action. In fact the court held that, whilst 3G had infringed 02's marks by virtue of its use of bubbles similar to 02's registered bubbles, it nonetheless did indeed have...