The Advertising Standards Authority (ASA) has recently upheld a complaint that ZipVit's advert for its ZV Snore Solution Spray (the "Product") was misleading since it implied that the product could cure snoring. The ASA also ruled that the name of the product itself "was likely to mislead", and told ZipVit "not to feature the product name again in future marketing material, unless that name had been registered as a trademark [sic]".

Background  

ZipVit produced an advert for the Product with the following text: "Sleep in peace with ZV Snore Solution Spray. Newly introduced to the ZipVit product range; this could be the product to save your relationship. Snoring can be brought on by smoking, colds or possibly weight gain and can lead to misery for the person having endure [sic] the noise night after night. Introduced at an unbeatable price of only £9.99 / 50ml, working out at less than 10p per night! Surely a cheaper option than an expensive separation!" (parenthesis in original).

A complaint was made asking ZipVit to substantiate the implied claim that the product could cure snoring.

Outcome  

The ASA ruled that the advert breached the Committee of Advertising Practice Code (the "CAP Code") clauses 3.1 (regarding the ability to substantiate claims), 7.1 (regarding the truthfulness of claims), and 50.1 (which relates to the need to be able to substantiate claims made about health and beauty products and therapies).

ZipVit agreed to amend the advert to exclude any reference to the product's ability to cure snoring.

However, as well as being concerned about the text of the advert, the ASA was also concerned by the name of the Product, and told ZipVit "not to feature the product name again in future marketing material, unless that name had been registered as a trademark [sic]".

Comment  

Both the content of the advert and the Product's name was found to imply that the Product cures snoring. If ZipVit cannot substantiate such claims, it should not be able to use either the product name or the other text in advertisements in the future.

However, the ASA's suggestion that ZipVit would be able to use the name in future marketing material if it had already been registered as a trade mark (it has not been registered) is worrying. The ASA appears not to have appreciated the restricted nature of the rights which are conferred by a trade mark registration. As Laddie J stated in the Inter Lotto case "registered trade marks, like all other statutory intellectual property rights do not give a right to the proprietor to use, but give him the right to exclude others from using. The types of activities which can be prohibited by the existence of a registered trade mark are those which are set out in section 10 of the [1994] Act. None of this gives rise to an entitlement to the proprietor to use".

The CAP Code and the Trade Marks Act 1994 (the "Act") serve different functions. The CAP Code regulates the advertising industry. The Act dictates what can and cannot be registered as a trade mark, the function of which is to guarantee the origin of goods to consumers. It is therefore not clear why the mere fact a trade mark has been registered means the ASA should not prescribe that it is not used in advertising.

This is so even though, despite their separate functions, the CAP Code and the Act have some overlap in what they prohibit. Specifically, section 3 of the Act, which lists the absolute grounds for refusal of registration of a trade mark states (at section 3(3)(b)) that "[a] trade mark shall not be registered if it is - … of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)". Furthermore section 47 of the Act provides that a registration can be declared invalid if it falls foul of section 3(3)(b).

The fact that section 3 prohibits registration and section 47 provides for invalidity of the same mark is not merely a "belt and braces" approach – a mark could well be non-deceptive when registered, but become so at a later date. For example, the (fictitious) mark THE PURE SCOTTISH WOOL SCARF might well be registrable if, when registered, the mark has sufficient distinctive character and the marked scarves are in fact made of pure Scottish wool. However, if in later years the trade mark owner out-sources the manufacture of the marked scarves to China, and makes them out of nylon, that mark would become of such a nature as to deceive the public, and hence liable to be declared invalid under section 47.

If THE PURE SCOTTISH WOOL SCARF was used as a product name of Chinese-manufactured nylon scarves in an advertisement, it would also seem to be an advertisement which is misleading within the terms of the CAP Code. It is not clear why a consumer should pay to have the trade mark invalidated before it can expect the ASA to act on its complaint by prescribing against the use of such a misleading product name in advertising.