The European Court of Justice (ECJ) has confirmed that trademarks can still be invoked as part of the anti-comparative advertising arsenal in itsmuch anticipated decision in the UK Court of Appeal’s reference in O2 Holdings Ltd and O2 (UK) Limited v Hutchison 3G Limited C-533/06 on 12 June. The case has come to be known as "the bubbles case" as it concerns the use by Hutchison 3G of bubbles similar to those used by O2 in an advertising campaign where it compared the costs of O2’s pay-as–you-gomobile phone service with its own.
Both the Advocate General, in his opinion earlier this year, and Lord Justice Jacob, in his referral to the ECJ, were clear in their opinions that trademark law should not have a role in the assessment of the legitimacy of comparative advertising, an area separately and specifically provided for by Community law. That approach presented some significant problems for owners of UK trademark rights since the coming into force of the Consumer Protection Regulations and the Business Protection Regulations (the Regulations) implementing the Unfair Commercial Practices Directive and theMisleading and Comparative Advertising Directive’s comparative advertising conditions. As the Regulations do not provide for an individual right of action, the AG’s suggestion that the enforcement of trademark rights in comparative advertising situations should not be an option, would have left UK rights owners relying solely on the OFT and Trading Standards to take action in such circumstances.
The ECJ’s decision in O2 steps back fromthis extreme and allows trademark rights to be enforced where there is a likelihood of confusion or some other breach of the comparative advertising conditions.Where there is a likelihood of confusion, trademark owners will have a choice as to whether to pursue the advertisers using their trademark rights, and/or attempt to trigger an enforcement action under the Regulations. The latter is a cheaper option, but one over the progress of which the trademark owner will have little or no control.
How easy it will be for trademark owners to demonstrate a likelihood of confusion is questionable. The ECJ, in an unusual foray into the facts of the case, declared that there was no likelihood of confusion in relation to the use of O2’s bubblesmarks in Hutchison 3G’s comparative advert. However, brand owners will welcome the ECJ’s clarification that, at least in some situations, they still have an individual right of action where unfavourable comparative advertising is concerned.