The IPKat has taken a proper read through AG Mezzoni's Opinion in O2 v H3G (see previous post for reference and details).
The case involved use by H3G of bubbles in an advert which compared its phone tarrifs to those of O2. O2 objected, arguing that the use infringed Art.5(1)(b) of the Trade Marks Directive (similar marks; identical goods) and, because it took unfair advantage of its bubbles and/or denigrated them, H3G's advert was unacceptable under the Comparative Advertising Directive as well.
The Court of Appeal referred 3 questions to the ECJ:
The AG opined that comparative advertising is harmonised by the Comparative Advertising Directive, and should not be considered under trade mark infringement. However, this did not stop him pointing out that, had trade mark infringement been relevant, it would have been a tricky one to decide since the ECJ's jurisprudence on trade mark use is contradictory.
‘(1) Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods or services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Article 5[(1)] of Directive 89/104?
(2) Where a trader uses, in a comparative advertisement, the registered trade mark of a competitor, in order to comply with Article 3a of Directive 84/450 as amended must that use be “indispensable” and if so what are the criteria by which indispensability is to be judged?
(3) In particular, if there is a requirement of indispensability, does the requirement preclude any use of a sign which is not identical to the registered trade mark but is closely similar to it?’
IPKat comment: it's not quite open season on trade marks (as the anonymous comentator in the previous post suggests, since under the Comparative Advertising Directive, we still look at types of harm which are mighty similar to trade mark infringement. It looks like good old s.10(6) is truly superfluous now.
On the second question, the AG found that the use of the trade mark did not need to be dispensible. Such a requirement wasn't suggested by the wording of the Directive or in previous cases. Also, it would be contrary to the spirit of the Directive, which sees comparative advertising as a good thing.
The favourable approach to comparative advertising meant that it should also cover use of marks which were similar, rather than identical, to the comparee's mark.
The AG then appears to go beyond his remit saying that in the circumstances, it would be hard to see how H3G could have taken unfair advantage ofO2's mark here. The AG says that the whole point of comparative advertising is to gain an advantage for oneself by establishing a link with the compared product. Thus, such a link would only be unfair if it might cuase the public to associate the reputation of the comparee's products with the comparor's. Such a link wouldn't occur here because in addition to the bubbles, H3G had identified O2 by reference to its word mark. The AG also said that while o2 might be able to argue that the distortion of its bubbles denigarted them, it could not raise the issue of whether the use had damaged their distinctiveness because damage to distinctiveness isn't mentioned in Art.3a.
IPKat comment: this favourable approach to comparative advertising is to be welcomed. He cautions readers to avoid using the AG's definitions of unfair advantage in relation to Art.5(2) of the Trade Marks Directive since they seem very much based in the justifications for comparative advertising, and also, appear to introduce a confusion element.
In view of the answer to the second question, the third question didn't need to be answered.