Full case report
O2 Holdings Ltd & Anor v Hutchison 3G UK Ltd (ECJ)
Reference Case C-533/06;  WLR (D) 193
Court European Court of Justice
Judge President of Chamber Jann, Judges Tizzano, Borg Barthet, Ilešiè and Levits
Date of Judgment 12 Jun 2008
Trade mark – Infringement – Comparative advertising – Art 5, Trade Marks Directive – Art 3a(1), Comparative Advertising Directive – Reference to ECJ – Right to prevent use of sign identical or similar to registered mark — Whether extending to use of sign in comparative advertising
Please see the Court of Appeal ruling for the facts of this case.
On appeal the Court held that (1) it was not clear whether Art 5(1) covered situations where the registered mark was used purely descriptively and in such a way that the essential function of the trade mark to indicate origin was not jeopardised; and (2) 3G would have had a defence if it complied with Art 3a of the CAD, but it was not clear whether it had done so or not, as it was not clear whether use of a mark had to be “indispensable” to comply with Art 3a, or, if it did, whether it was permissible to use a sign confusingly similar to the registered mark.
The Court of Appeal sought a preliminary ruling from the European Court of Justice on the issues raised.
Whether where a trader, in an advertisement for his own goods or services, uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods or services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, this use falls within Article 5(1) of Directive 89/104.
Where a trader uses, in a comparative advertisement, the registered trade mark of a competitor, in order to comply with Article 3a[(1)] of Directive 84/450 … whether that use must be “indispensable” and if so what are the criteria by which indispensability is to be judged.
The Trade Mark Directive and the Comparative Advertising Directive must be reconciled. On their proper interpretation a proprietor was not entitled to prevent the use by a third party trader of a sign identical, or similar to, his mark in comparative advertising where all the conditions laid down in art 3a(1)(d) of the Comparative Advertising Directive were met: that is, the proprietor was permitted to do so only where the mark was being used in the course of trade, without consent, in respect to similar or identical goods, and in a way likely to cause confusion.
In the present case, it was accepted that the advertisement had not given rise to the likelihood of confusion on the part of consumers as to any commercial link between the claimants and the defendant. Consequently it was held that there was no need to examine the subsequent questions referred.
This important ruling confirms the viability of comparative advertising. The ECJ’s views echoed those expressed by Jacob LJ in the Court of Appeal.
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