O2's bubbles are burst
Introduction
In a landmark trade mark infringement case, O2 failed to convince an English High Court judge that Hutchinson 3G should be prevented from using visual images of bubbles similar in appearance to those used and registered as trade marks by O2. The case highlights the reluctance of the English Courts to prevent competitors engaging in robust comparative advertising campaigns.
In August 2004, Hutchinson 3G ("H3G") ran a series of advertisements on television to promote its new pay-as-you-go service. The advertisements compared H3G's services with those of its competitors, including 02. The advertisements that compared H3G's services with those of O2 began with a stream of bubbles being dispensed across the television screen. Subsequently a male voice-over spoke about the price of 02's service, as compared to the price of H3G's service.
02 objected to the use of the bubbles, alleging that such use infringed its registered trade mark rights in a number of bubble images that the company had registered as UK trade marks.
02 claimed that H3G did not need to use the bubble imagery in order to conduct a price comparison between 02's and 3HG's services; that the use of the bubble imagery was gratuitous and took advantage of 02's brand reputation to grab consumers' attention (and thus enhanced the reputation of H3G's brand); and that the use of the bubble imagery blurred the distinctiveness of 02's trade marks.
Carl Steele, a senior associate at Ashfords, comments:
"The judge hearing the case agreed that the use of the bubble imagery infringed 02's registered trade marks. However, he held that H3G were entitled to use the bubble imagery for the purpose of conducting a comparative advertising campaign. He was not convinced by O2's arguments. He held that an advertiser can use a competitor's brand imagery, rather than just its brand name, for the purpose of conducting a comparative advertising campaign.
The judge concluded that the advertisement was honest and the price comparison was not misleading. Overall, the advertisement complied with the EC's Comparative Advertising Directive. As a consequence, the use of the bubbles was permitted."
The judge's decision has wide-ranging implications for businesses engaged in (or the subject of) comparative advertising campaigns. Overall, the impression is that the English Courts are reluctant to interfere with honest, robust comparative advertising campaigns. However, before commencing such a campaign business would still be well advised to seek independent legal advice, so as to ensure their planned activities remain the right side of the law.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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