December 2006
Trade Mark O2 and 3 bubble trade mark dispute: O2 Holdings Limited (formerly O2 Limited) O2 (UK) Limited- and -Hutchison 3G Limited
The trade mark dispute between mobile phone network empires "O2" and "3G" has been referred to the European Court of Justice for clarification.
In this case, O2 alleged that adverts issued by 3G using images of bubbles as a reference to O2 whilst comparing prices infringed O2's trade marks.
Questions referred to the ECJ involved conflicting rules relating to trade mark law which protects the brand images and word marks, and the laws contained in the Comparative Advertising Directive, which states that trade marks can be used in comparative advertising, to a certain limited extent. The Directive which also applies in the UK states that in order to make comparative advertising effective, it must be necessary or "indispensable" in order to "identify the the goods or services of a competitor, making reference to a trade mark or trade name of which the latter is the proprietor". 3 won the case in the High Court earlier this year, in March 2006 when the court held that although the adverts infringed O2's trade marks, they came under the comparative advertising exemption.
Lord Justice Jacob in the Court of Appeal said that Europe needed to take a decision on the competing laws on the one hand concerning infringement and on the other-hand concerning the parameters of comparative advertising. He also asked the question "How aggressively does EU law permit comparative advertising to go?" In particular he asked: "can the advertiser not only use his rival's main name or trade mark but also, honestly, his subsidiary registered trade marks including marks embodying his trade imagery (what the Americans call trade dress)?"
Jacobs asked the ECJ the three following questions:
"Where a defendant in the course of trade uses a sign in a context purely for the purpose of comparing the merits (including price) of his goods or services with those of the trade mark owner and in such a way that it cannot be suggested that the essential function of the trade mark to guarantee the trade mark as an indication of origin is in any way jeopardised, can his use fall within either (a) or (b) of Art.5.1 of Directive 89/104?"
"Where a defendant uses, in a comparative advertisement, the registered trade mark of another, in order to comply with Art. 3a of Directive 84/450 as amended, must that use be 'indispensable' and if so what are the criteria by which indispensability is to be judged?"
"In particular, if there is a requirement of indispensability, does that requirement preclude any use of a sign so similar to the registered trade as to be confusingly similar to it?"
In his own opinion, Lord Justice Jacobs said that parts of the law required clarification for the courts "there are some oddities about the Comparative Advertising Directive". He also stated "I would refer three questions to the ECJ. I do not regard those I have suggested as set in stone and they should be open to post-judgment discussion".
We will await the outcome of the ECJ's response.