In the wake of L'Oreal v Bellure, the subject of comparative advertising is again in the spotlight.
A judgment by Mr Justice Kitchin was handed down on 21 February 2011 in the case of Kingspan v Rockwool. This case considered the scope of comparative advertising under the Misleading and Comparative Advertising Directive and has also taken the unusual step of agreeing to grant declaratory relief arising from the misleading statements made.
Kingspan makes a wide range of construction products including insulation boards and panels made with plastic foams. Rockwool is a producer of mineral wool (or "stone wool") which is used as the insulating core of its own products and also panels made by other companies.
Unusually for a comparative advertising case, the advertising in issue consisted of a series of road shows. These road shows were run by Rockwool in 2007 and 2008 and sought to compare the fire performance of two of its products against up to three different Kingspan products. During the road shows the products were subjected to two small scale fire tests. Although Rockwool did not use the Kingspan trade marks in the 2008 road shows, Rockwool acknowledged that the campaign was aimed at Kingspan.
Rockwool also arranged for a recording to be made of the same products being subject to a large scale international fire test known as ISO 9705. The purpose of this exercise was to 'back-up' the results of the smaller demonstrations. The edited highlights of these tests were produced on a video and shown at the 2007 road shows. It showed the fire tests with a voiceover. A further version of the video was then produced which Rockwool proposed to circulate to a wider audience than that attending its road shows. Both this video and the first video referred to the Kingspan trade marks.
Rockwool then produced a third video in which the voiceover was changed and all references to the Kingspan trade marks and product names were removed. Thousands of copies of this third video were distributed to members of the public by post. It also featured on Rockwool's website, on the front cover of a trade magazine and in the delegate pack for the road shows that took place in 2008.
Kingspan claimed that the advertising campaign represented its products as a fire hazard and unsafe for their purposes. It issued proceedings against Rockwool for infringement of its trade marks in Rockwool's 2007 road shows and its first two videos, contrary to Directive 2008/95/EC and Council Regulation 207/2009. Kingspan also claimed malicious falsehood in relation to the third unbranded video. It sought declarations as to the misrepresentations which it said were made by Rockwool in both the road shows and videos.
Rockwool countered that the tests performed in the road shows and videos were fair and objective. On this basis, although the 2007 road shows and the first two videos used the Kingspan trade marks, this was not trade mark infringement as it fell within the scope of the Misleading and Comparative Advertising Directive, which permits unauthorised use of another's trade mark where products are compared objectively. Rockwool also argued that the road shows and videos did not contain the alleged misrepresentations and it had not acted maliciously. It sought its own declaratory relief in proceedings issued one day after Kingspan commenced its case.
Kitchin J considered each of the misrepresentations alleged by Kingspan in turn and concluded that in relation to the road shows:
- Rockwool represented that the tests evaluated the performance of Kingspan's products in a real life scenario and therefore illustrated the real risks of installing the products in buildings. Kitchin J concluded that the products were not installed as they would be in real life and the representation was therefore false;
- Kitchin J agreed with Rockwool that it had not represented that the tests performed at the road show would obtain the same or similar results as the larger scale test. However Rockwool did represent that the tests performed at the road shows were appropriate tests from which conclusions might properly be drawn as to the relative dangers in a fire of Kingspan and Rockwool products when properly installed and used for their intended purpose. Further Rockwool represented that they provided a fair comparison. For the same reasons as above, Kitchin J found these representations were false. The tests could not provide any basis for evaluating the relative dangers in a fire of the products when properly installed as their installation did not reflect real life use; and
- Rockwool represented that the tests showed that Kingspan's products are dangerous when used for their intended purpose. Kitchin J described this as a "key allegation" which was strongly disputed by Rockwool. However, the judge found that Rockwool did indeed represent that Kingspan's products, when installed, are not safe, present a real fire danger with significant associated fire fighting problems and have dramatic implications regarding escape times and structural damage. He held that these representations were false.
Kitchin J went on to consider the videos and concluded:
- The representation was made that the ISO 9705 was intended to evaluate the contribution made to fire growth by Kingspan's insulation board products. However the ISO 9705 test is intended to test surface products and Kingspan's insulation boards are not surface products;
- Rockwool acknowledged that it represented that the tests were conducted in accordance with the method required by ISO 9705 but Kitchin J held that two of the products could not be tested in accordance with ISO 9705 as they are non-surface products;
- Rockwool represented that the ISO 9705 test was appropriate and conclusions could properly be drawn as to the relative dangers in a fire of Kingspan and Rockwool products when properly installed and used for their intended purposes. Further they represented that the test provided a fair comparison. However, Kitchin J held that this was false as the Kingspan products were not installed as they would be in real life;
- Contrary to the facts, Rockwool represented that ISO 9705 was reasonable to perform in order to ascertain whether a building incorporating the Kingspan products complied with the UK Building Regulations; and
- Rockwool represented that the tests showed that Kingspan products were dangerous when properly installed and used for their intended purpose. Kitchin J held this representation was not justified.
The judge's conclusions
In light of the misrepresentations detail above, Kitchin J found that the tests conducted during the 2007 road shows and the first two videos, in which the Kingspan trade marks were used, were each misleading and failed objectively to compare the features of the Rockwool and Kingspan products. As a result they infringed Kingspan's trade marks, under Article 5(1)(a) and (2) of the Trade Mark Directive and Article 9(1)(a) and (c) of the CTM Regulation. Furthermore the 2007 road shows and the first video had taken unfair advantage and caused detriment to the repute of the Kingspan trade marks and had discredited and denigrated Kingspan's products.
Whilst Kitchin J held that the advertising was misleading he did not find that Rockwool had acted out of malice and the claim for malicious falsehood was dismissed. Rockwool's claim for declarations was also dismissed.
Whilst the precise form of order including any declarations of fact has yet to be decided, the case is unusual in that the court has been asked, and has agreed, to make declarations of fact in relation to advertisements where registered trade marks were not used. This is yet another example of the UK court's willingness to use the ancient remedy of a declaration in new and innovative ways whenever it will help to resolve a dispute of substance between the parties.
The judge also accepted that Kingspan needed to show "a serious risk" that damage would occur to the mark in the future as opposed to evidence of "actual and present injury". This will be welcomed by trade mark owners who have seen speculation by some commentators that concrete evidence of damage is necessary to establish infringement under Article 5(2) in the form of a "change in economic behaviour" following comments in the ECJ's judgment in Intel v CPM.