TO BE, OR NOT 02 BE ...

Now for the promised blog on O2 Holdings Ltd and another v Hutchison 3G UK Ltd [2005] EWHC 344 (Ch), first noted on the LexisNexis All England Direct subscription service and then swiftly posted on to BAILII in full.

This was a spat between O2 and 3, two businesses that provide services in the UK's crowded and vicious mobile phone market. Since O2's name was the same as the chemical formula for oxygen the company adopted a ‘blue bubble imagery’ and registered trade marks which included bubbles. Rivals 3 launched comparative advertisements on TV and elsewhere, comparing 3 with O2 and featuring a bubble sequence shot in black and white. O2 sued for trade mark infringement and passing off. Although O2 failed to obtain an interim injunction, the court ordered a speedy trial. In this hearing O2 applied to the court to refer 12 questions to the European Court of Justice (ECJ) for a preliminary ruling. According to O2 this reference should be made before the trial on the merits of their claim. It was inevitable, they argued, that a reference would be made at some stage and, if it was made now, the ECJ's responses would or might eliminate, reduce in scope or at least affect substantial areas of factual inquiry. 3 opposed the application on the ground that a reference to the ECJ was unnecessary at this stage and the Vice-Chancellor, Sir Andrew Morritt, agreed.

3: pricking the bubbles of O2's hopes of a reference to Luxembourg

The judge agreed that the conventional view was that the facts should be found before a reference was made. It was clear, however, that that was not an indispensable requirement. In this case, though, the court could not say that it would definitely need the answers to the questions O2 wanted to refer. A reference to the ECJ at this stage would thus be premature and probably incomplete. If so, it would actually delay the trial and prejudice the quality of evidence to be adduced at the trial. None of the 12 questions would arise if 3 succeeded in making good its counterclaim that each of O2's bubble marks was devoid of any distinctive character.

The IPKat thinks this approach is correct. We have already seen the mess that results when the same dispute gets referred to the ECJ twice (in the Boehringer Ingelheim case) and the delays that result from it. Merpel says, "what a shame the ECJ doesn't fast-track references that arise in fast-moving areas like commercial law and intellectual property, where business decisions have to be taken, while leaving the boring constitutional and institutional stuff to be slow-tracked instead".

Bubbles here and here
Power of three here and here