news

17th June 2008

The 02 v 3G trade mark saga, a feud between the rival mobile phone operators over the use of the visually distinctive O2 bubble trade mark in a comparative advertisement, has finally reached its conclusion.

The use of a trade mark for the purposes of comparative advertising generally will not give rise to an infringement. Section 10(6) of the Trade Mark Act 1994 provides that a trade mark will not be infringed if it is used “for the purpose of identifying goods or services as those of the proprietor or a licensee” provided that the use is “in accordance with honest practices in industrial or commercial matters”.

The UK therefore takes a fairly liberal approach to the issue of comparative advertising. Provided the use of a trade mark is not detrimental to the distinctive character or repute of the trade mark, it will be legitimate. The European Court of Justice (ECJ) has now provided greater elucidation in the discussed ruling.

O2 alleged that H3G had infringed its signature bubble trade mark in a comparative advertising campaign used in 2004. The ECJ held that so long as there was no risk of consumer confusion, H3G were entitled to use robust but fair comparative advertising techniques which incorporated a sign similar or identical to a registered trade mark. There would only be trade mark infringement if 3G’s advertising went beyond this threshold. The ECJ stated that the advertisement, as a whole, was not misleading and that it did not suggest that there was any form of commercial link between O2 and H3G. Therefore, there was no real likelihood of confusion.

According to the ECJ, the test for establishing whether an advertisement is comparative in nature is to ask whether it “identifies, explicitly or by implication, a competitor of the advertiser or goods or services which the competitor offers” (at para. 43). This assessment is to be made by reference to the average consumer of the goods or services in question.

This decision was the culmination of approximately four years’ of litigation, the case having been referred to the ECJ by the Court of Appeal for preliminary reference. Prior to this, the High Court had dismissed 02’s action for trade mark infringement on the ground that H3G were engaged in legitimate comparative advertising. O2’s application for an injunction restraining H3G’s use of the bubble trade mark was accordingly refused, prompting an appeal to the Court of Appeal. It can be ascertained from the ECJ’s ruling that so long as the use of a trade mark does not give rise to a real risk of consumer confusion, then the use will be fair. This is a positive outcome for those seeking to utilise comparative advertising techniques.