O2 Holdings Ltd & Anor v Hutchison 3G Ltd (CA)
Reference:  EWCA Civ 1656;  RPC 16
Court: Court of Appeal
Judge: Mummery and Jacob LJJ, Sir Christopher Staughton
Date of judgment: 5 Dec 2006
Summary: Trade marks - Infringement - Comparative advertising - Arts 5(1), 5(2), Trade Marks Directive - Comparative Advertising Directive - Defence - Purely descriptive use of mark - Whether requirement that use of mark indispensible to make comparative advertisement effective
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Instructing Solicitors: Wragge & Co for the Appellant; Lewis Silkin for the Respondent
O2 owned four registered trade marks consisting of static pictures of bubbles. It claimed that 3G’s advertising infringed two of these marks pursuant to Art 5(1)(b) of the Trade Marks Directive and infringed the other two pursuant to Art 5(2) of the Directive.
Lewison J held that there had been no infringement pursuant to Art 5(2) and that 3G had a defence under Art 3a of the Misleading Advertising Directive (as amended by the Comparative Advertising Directive, Council Directive 97/55) in respect of the infringements under Article 5(1)(b).
(1) Whether the advertisements had infringed two of the marks pursuant to Art 5(1)(b);
(2) If so, whether 3G had a defence.
Referring 3 questions to the European Court of Justice:
(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 the issue was referred to the ECJ.
(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. Questions were referred on these two points.
Although finding the issues sufficiently unclear to warrant a reference, Jacob LJ did offer his own views. He did not think Art 5(1) ought to apply to purely descriptive use as, considering the key function of trade marks was to indicate origin, there was no need for trade mark law to cover such use. Nor did he think there ought to be an indispensibility requirement for using marks in comparative advertising, as this was inconsistent with the approach in Toshiba and Pippig. He also raised, but did not answer, the question of whether compliance with the CAD provides a defence to any IP claim. For example, it currently does not in respect of copyright infringement, which surely negates much of the purpose of the CAD.