ECJ: 3’s use of O2 trade mark lawful

Comparative advertising acceptable as no confusion caused, Luxembourg rules

O2 has failed to stop rival mobile operator 3 making use of O2’s name and bubbles trade marks in price-comparison advertising, the ECJ has ruled.

The UK Court of Appeal had asked the European Court whether 3’s use of O2’s registered trade marks in comparative advertising was illegal under trade mark law. The ECJ said that violation would only occur if the use was in the course of trade; was without the trade mark owner’s consent; was in relation to the same kinds of goods or services as that for which the trade mark is registered; and confuses consumers as to the origin of the goods or services. 3 would be entitled to use the trade marks in its price comparative advertising because the public would not be confused into thinking that the advert had been put out by O2.

The ruling that the usage did not give rise to a likelihood of confusion on the part of consumers was consistent with the decision of the Court of Appeal. The advertisement could not be categorised as misleading and did not suggest any commercial tie-up between O2 and 3. European trade mark law permits comparative advertising as an exemption but this decision of the ECJ makes clearer the degree to which the competitor’s corporate identity and image can be used.

It now follows that the Court of Appeal must apply the ruling.


For the full case report, click here.