header-logo header-logo

ECJ: comparative ads can use rival trade marks

19 June 2008
Issue: 7326 / Categories: Legal News , EU
printer mail-detail

Legal news

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.”

Issue: 7326 / Categories: Legal News , EU
printer mail-details

MOVERS & SHAKERS

Birketts—trainee cohort

Birketts—trainee cohort

Firm welcomes new cohort of 29 trainee solicitors for 2025

Keoghs—four appointments

Keoghs—four appointments

Four partner hires expand legal expertise in Scotland and Northern Ireland

Brabners—Ben Lamb

Brabners—Ben Lamb

Real estate team in Yorkshire welcomes new partner

NEWS
Robert Taylor of 360 Law Services warns in this week's NLJ that adoption of artificial intelligence (AI) risks entrenching disadvantage for SME law firms, unless tools are tailored to their needs
The Court of Protection has ruled in Macpherson v Sunderland City Council that capacity must be presumed unless clearly rebutted. In this week's NLJ, Sam Karim KC and Sophie Hurst of Kings Chambers dissect the judgment and set out practical guidance for advisers faced with issues relating to retrospective capacity and/or assessments without an examination
Delays and dysfunction continue to mount in the county court, as revealed in a scathing Justice Committee report and under discussion this week by NLJ columnist Professor Dominic Regan of City Law School. Bulk claims—especially from private parking firms—are overwhelming the system, with 8,000 cases filed weekly
Charles Pigott of Mills & Reeve charts the turbulent progress of the Employment Rights Bill through the House of Lords, in this week's NLJ
From oligarchs to cosmetic clinics, strategic lawsuits against public participation (SLAPPs) target journalists, activists and ordinary citizens with intimidating legal tactics. Writing in NLJ this week, Sadie Whittam of Lancaster University explores the weaponisation of litigation to silence critics
back-to-top-scroll