COMPARATIVE ADS SHOULD NOT BE THREATENED BY TRADE MARK LITIGATION, RULES JUDGE

Yesterday's LexisNexis' All England Direct subscription-only service carries news of O2 Ltd and another v Hutchison 3G UK Ltd, a decision of Mr Justice Pumfrey (High Court, Chancery Division).

02 ran a mobile telephone network. Hutchinson, a relative new competitor, marketed its services through a series of television, radio and press advertisements which compared its prices with 02's for pre-pay tariffs. 02 sued for interim injunctive relief, alleging that the price comparison was misleading and that Hutchinson had infringed its UK and Europe ‘O2’ trade marks, which were used along with bubbles (another feature of 02's adverts). Hutchinson maintained that the price comparison was fair, that the trade mark was not infringed and that they were entitled to protection under the Trade Marks Act 1994, s.10(6) and Article 12(b) of Council Regulation 40/94 (on the Community trade mark, both of which allow honest use of another's mark.

Pumfrey J dismissed 02's application. Applying the principles laid down so trenchantly by Mr Justice Jacob (as he then was) in British Airways plc v Ryanair Ltd, he ruled that the right to use accurate comparative advertising should not be interfered with by allegations of trade mark infringement. Both s.10(6) of the 1994 Act and Art.12(b) of the Regulation permitted comparative advertising, provided that the use made by advertisers was in accordance with honest commercial practices.

The IPKat knows how much decisions such as this will irritate many of his readers from across the English Channel, who hate to see advertisements in which a competitor's trade mark is detrimentally compared. But as a good consumer, the IPKat values honest comparisons and thinks that any trade mark owner must be prepared to tolerate criticism of his price or product quality if it's fair.

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