The ECJ has given judgement in the O2 v Hutchinson 3G referral and held that a trade mark owner can bring an infringement claim to prevent use of his mark in comparative advertising if he can show a likelihood of confusion between his goods/services and those of the advertiser.
In connection with its mobile phone services, 02 owned and use various registered trade marks for bubble images. 3G ran a TV advertisement for its own mobile phone services, containing the term “02” and some bubble images, and implying that its services were cheaper than those of 02. 02 brought a claim for trade mark infringement.
The matter went to the Court of Appeal, which referred three questions to the ECJ:
1. does the use of a competitor’s trade mark in comparative advertising fall within the scope of trade mark law?;
2. must the use of the competitor’s trade mark in a comparative advert be “indispensible”? (and how should “indispensability” be judged?); and
3. if the use of the competitor’s trade mark must be indispensible, does this preclude use of a similar (as opposed to identical) sign?
The ECJ declined to answer questions 2 and 3. In respect of question 1 the ECJ held that use of a trade mark in comparative advertising does count as use of a trade mark in the course of trade, but a comparative advertisement must only be considered in the light of the Misleading and Comparative Advertising Directive (as amended) (“CAD”).
The only exception is where use of a trade mark in a comparative advertisement could create confusion in the market place between the goods and services of the advertiser and those of the competitor. In this case confusion has the same meaning as that in the Trade Marks Directive and the competitor is entitled to sue the comparative advertiser for trade mark infringement.
On the facts the ECJ held that there was no likelihood of confusion between 02’s trade mark bubbles and the bubbles used by 3G. Accordingly, 3G had not infringed 02’s trade mark.
The outcome of this judgement is that, in order to avoid avoid being successfully sued for infringement, comparative advertisers should always make sure that their comparative advertisements meet the requirements of the CAD.