ECJ: comparative ads can use rival trade marks

A trade mark owner cannot stop a rival using an identical or similar sign in a comparative advertisement where the use is not likely to confuse the public, the European Court of Justice (ECJ) has ruled.

In O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited, Hutchison 3G (H3G), included the name O2 and moving bubble imagery in an advert for its Threepay service.

O2, which owns two British trade marks consisting of a static picture of bubbles, brought proceedings for trade mark infringement.

The ECJ said a trade mark owner may prevent the use of a sign similar to his mark only if used: in the course of trade; without the consent of the mark owner; in respect of goods or services identical with, or similar to, those for which the mark is registered; in a way likely to confuse the public. The court said the first three conditions were satisfied but that the use by H3G of bubble images similar to the trade marks did not give rise to a likelihood of confusion on the part of consumers. O2’s case therefore failed.

Macfarlanes solicitor, Michael Walmsley, says: “A trade mark owner cannot object to use of marks similar to his trade mark in comparative advertisements unless he can show that the use of the mark causes a likelihood of confusion or unfairly takes advantage of or discredits his trade mark.”