A nice drop of bubbly from the ECJ

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.

This suggests:

• 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

The IPKat reckons that it sounds like the ECJ has got pretty close to applying the law to the facts here. The Kat is in two minds about the way the decision seems to have panned out. On the one hand, it makes life a lot simpler conceptually if comparative advertising is taken out of trade mark law, but on the other hand, why as a matter of principle, should comparative advertising be treated differently from other forms of use, particularly since there is no express defence of comparative advertising in the Directive. He is also rather puzzled. What if you don't meet the other conditions of Art.3a, for example if you denigrate the mark? This is also a ground of trade mark infringement - is the ECJ trying to say that Art.5(2) infringement doesn't apply to comparative advertising?

More from the IPKat when the full judgment comes out.