BUBBLES GO TO EUROPE

STOP PRESS: the report of the case discussed below is now available here on BAILII

Bubbles go to Europe

At 10am this morning the Court of Appeal for England and Wales (Lords Justices Mummery and Jacob, plus Sir Christopher Staughton)handed down its keenly-awaited decision in O2 Holdings v Hutchison 3G [2006] EWCA Civ 1656. The judgment is not yet available on BAILII, which is currently undergoing surgery but should be recovered by tomorrow.

This dispute involved a comparative advert in which 3G, wishing to extol the virtues of its own pre-paid mobile phone service, alluded to the service of its competitor O2 by featuring bubbles - but not the same bubbles as those that O2 had registered as a UK trade mark.

The Court of Appeal, in a judgment delivered by Jacob LJ, has decided to stay its decision until it has received preliminary rulings from the European Court of Justice on three questions:

1. Where a defendant in the course of trade uses a sign in a context purely for the purpose of comparing the merits (including price) of his goods or services with those of the trade mark owner and in such a way that it cannot be suggested that the essential function of the trade mark to guarantee the trade mark as an indication of origin is in any way jeopardised, can his use fall within either (a) or (b) of Article 5(1) of Directive 89/104?

Note: Article 5(1) reads as follows: "The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark".

The answer Jacob LJ gives to this question (at para.33, "in case it would be of assistance to the court"), is "no".

2. Where a defendant uses, in a comparative advertisement, the registered trade mark of another, in order to comply with Article 3a of Directive 84/450 as amended, must that use be 'indispensible' and, if so, what are the criteria by which indispensability is to be judged?

Note: Article 3a of Directive 84/450 states: "1. Comparative advertising shall, as far as the comparison is concerned, be permitted when the following conditions are met:
(a) it is not misleading within the meaning of Articles 2(2), 3 and 7(1) of this Directive or Articles 6 and 7 of Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in
the internal market;
(b) it compares goods or services meeting the same needs or intended for the same purpose;
(c) it objectively compares one or more material, relevant, verifiable and representative features of those goods and services, which may include price;
(d) it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor;
(e) for products with designation of origin, it relates in each case to products with the same designation;
(f) it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products;
(g) it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name;
(h) it does not create confusion among traders, between the advertiser and a competitor or between the advertiser's trade marks, trade names, other distinguishing marks, goods or services and those of a competitor".

The answer Jacob LJ gives this time (at para.70) is another "no".

3. In particular, if there is a requirement of indispensability, does that requirement preclude use of a sign so similar to the registered trade [mark] as to be confusingly similar to it?"

Consistent to the last, the answer of Jacob LJ (at para.77) is a final "no".

Earlier IPKat note (promising a more detail analysis that never happened) and link to first instance ruling here
Interesting things about bubbles here
What's inside a bubble - and why do bubbles pop? Click here