The comparative advertising defence to trademark infringement and 'the case about bubbles'

The High Court judge said 'this case is about bubbles'. ¹ The Court of Appeal judge clarified that O2 Holdings Limited, O2 (UK) Limited v Hutchison 3G Limited² is about a lot more than that. In short, it is about finding out how aggressively European law permits comparative advertising to go as a defence to trade mark infringement.

The case is important to all brand owners because it will help to clarify the rules on this element of trade mark law; rules that all brand owners need to know in order to be clear on when their competitors stray outside the protection of the defence and into an actionable trade mark infringement.

The defence of comparative advertising is set out in a European directive³ ('the Directive'). The defence is also available under Section 10(6) of the Trade Marks Act 1994. Essentially, the defence enables a competitor to use a registered trade mark in its advertisements without the consent of the trade mark owner for the purpose of drawing an objective comparison between one or more of the features of the goods or services concerned, such as price. The rationale is that in order to make comparative advertising effective and so to help the consumer to make an informed choice, the advertiser ought to be able to use his competitor's registered trade mark for the purpose of comparison in his advert.

The Directive can be used as a defence to a whole range of intellectual property rights including copyright or design rights as well as trade marks. It is in the context of trade marks, however, that the English courts have so far applied it.

What follows is a discussion of the case and a look at what the implications of the Court of Appeal's robust approach might be for brand owners.

THE FACTS AND THE PARTIES' ARGUMENTS

O2's had invested £320m in just over two years into establishing the O2 brand. The brand consisted of the O2 name; the logo 'O₂ ' which represents the chemical symbol for oxygen; bubble imagery and a blue background. O2 had registered four 'bubble' trade marks called 'technical', 'fizz', 'relax' and 'continuous' in relation to classes 9 (telecommunications apparatus) and 38 (telecommunications services) among others.

In...