Today the ECJ has ruled on the dispute between O2 and H3G. O2 objected to a comparative advertisement, in which H3G used bubbles in the course of making a price comparison with O2's mobile telephone services. O2 is the proprietor of various trade marks depicting bubbles. A reference to the ECJ from the Court of Appeal of England and Wales ensued.
The court's judgment isn't out yet, but a press release is available on the ECJ's website.
- in contrast to the Advocate General's opinion, the ECJ is of the view that a comparative advertisement CAN infringe a trade mark
- however, the legislature has shown a clear intention to promote comparative advertising, and therefore the rights granted by trade mark law are limited by comparative advertising
- consequently, a trade mark owner CANNOT oppose the use of his mark in comparative advertising where all the condition of Art.3a of the Comparative Advertising Directive are met
- where there is a likelihood of confusion, by definition not all the conditions of Art.3a are met, and therefore the comparative advertiser can be pursued under trade mark law
- four conditions must be met before action can be taken against a comparative advertiser under trade mark law: (1) that use must be in the course of trade; (2) it must be without the consent of the proprietor of the mark; (3) it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered; and (4) it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public
- in this case, there was no likelihood of confusion and so the fourth condition wasn't met and there could be no trade mark infringement by H3G
More from the IPKat when the full judgment comes out.