This article was first published by David Bond in ABTA's Travel Law Today in May 2016.
Look at any website and you will see frequent references to third party trade marks. The majority of these references simply describe the business or products that are being discussed – and that is absolutely fine. Any honest use of a third party's trade mark in a descriptive manner or in a way other than "in the course of trade" is acceptable and would not infringe the owner's rights.
However, there are many situations where you can stray from fair, legitimate use to potentially infringing a third party's trade marks. Comparative advertising – where you identify a competitor or its products or services (either expressly or by implication) - is one of the most common areas where this line can be crossed. So what can and can't you do?
As a starting point, always consider the circumstances in which trade mark infringement occurs, specifically, a registered trade mark is infringed where it is used in the course of trade without the owner's consent in any of the following circumstances:
- The name or logo ("mark") you are using is identical to someone else's registered trade mark and is used in relation to goods/services which are identical to those for which the trade mark is registered; or
- The mark you are using is:
- identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered; or
- similar to the registered trade mark, and used in relation to goods or services which are identical or similar to those for which the trade mark is registered;
and, in each case, the use is likely to cause confusion on the part of the public, often through creating an association; or
- The mark you are using is identical or similar to a registered trade mark that has a reputation in the UK, and the use of the mark, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
The law governing comparative advertisements has largely been harmonised across the EU by virtue of the Comparative Advertising Directive and, in brief, you can use a third party's trade mark in such advertising provided the following key conditions are met:
- It is not "misleading". It will be misleading if it, in any way, deceives (or is likely to deceive) the target and as a result is likely to affect the target's buying decision or which injures (or is likely to injure) the competitor.
- It is a fair comparison, i.e. the products and services you compare meet the same needs or are intended for the same purpose.
- It objectively compares one or more material, relevant, verifiable and representative features of the products or services, and these may include price.
- It does not discredit or denigrate the marks or products or services of your competitor.
- If your products contain a designation of origin, the comparison must relate to products with the same designation.
- It does not take unfair advantage of the reputation of your competitor's trade mark. The ECJ's somewhat controversial decision in the L'Oréal SA and others v Bellure NV and Others case clarifies this condition. Bellure took unfair advantage of L'Oreal's reputation by using packaging similar to various registered shape marks owned by L'Oréal and using comparison lists to indicate which of L'Oreal's well-known perfumes corresponded in fragrance to each of Bellure's cheap imitations.
- It does not present products or services as imitations or replicas of the competitor's products or services.
- It does not create confusion among traders, between you and a competitor or between your trade marks, other distinguishing marks, products or services and those of a competitor.
If your comparative advertisement does not fall within these rules then you will be exposed to liability for trade mark infringement and possible enforcement action.
David Bond is a Partner and the Head of Advertising & Marketing at Fieldfisher LLP. David advises the travel industry on all aspects of advertising and marketing law including advertising copy, comparative advertising, creative and media planning and buying agency contracts, ASA complaints and defence.
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