Comparative advertising and registered trade mark infringement – be careful what you say

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Last month the High Court handed down its decision in the trial of a preliminary issue in Gibraltar UK Ltd & Vet Plus Ltd v Viovet Ltd [2024] EWHC 777 (Ch).

The case involves a claim for registered trade mark infringement, based on an alleged contravention of the provisions set out in the Business Protection from Misleading Marketing Regulations 2008 (“the Regulations”) relating to comparative advertising.

What is comparative advertising?

Comparative advertising arises where an advertisement compares (explicitly or by implication) goods or services of competing suppliers. In order to do so often a business uses a registered trade mark of a third-party competitor without their permission. This is lawful, provided the advertisement complies with the Regulations.

What is the case about?

The defendant ran a series of advertising campaigns on its website that offered the claimants’ trade marked products (namely, veterinary nutraceuticals) for sale. 

When a customer selected one of those products, they were given the option of either buying the product or, alternatively, one of the defendant’s own brand products. Certain text was also used (e.g. “Swap and Save £[x]”; “Save £[x] per day”; “Try something new”).

The claimants assert the defendant used the first claimant’s registered trade marks for the purposes of comparative advertising in a manner contrary to that permitted by the Regulations - and therefore such use constitutes registered trade mark infringement.

What does the relevant law say?

The Regulations 2008 provide that “advertising" means any form of representation which is made in connection with a trade, business, craft or profession in order to promote the supply or transfer of a product and "comparative advertising" means advertising which in any way, either explicitly or by implication, identifies a competitor or a product offered by a competitor.

Further, comparative advertising is permitted only when it meets various conditions, including that it is not misleading; it compares products meeting the same needs or intended for the same purpose; it objectively compares one or more material, relevant, verifiable and representative features of those products, which may include price; it does not discredit or denigrate the trade marks of a competitor; it does not take unfair advantage of the reputation of a trade mark of a competitor and it does not present products as imitations or replicas of products bearing a protected trade mark.

What was the Court asked to decide and what did it decide?

The Court was asked to decide, as a preliminary issue, what message was conveyed by the comparative advertising.

The claimants asserted that each of the defendant’s ads impliedly conveyed the message that the defendant’s own brand products offered in the alternative were comparable in nature and/or composition and/or specification to the relevant products of the claimants including, inter alia, the efficacy and quality of the products.

The defendant asserted that the ads would be understood as making only a comparison as the price of the parties’ respective goods.

The Court held that the average consumer would regard the adverts as statements that the defendant’s products offered in the alternative were comparable in nature and/or composition and/or specification to the relevant products of the claimants including, inter alia, the efficacy and quality of the products. In particular, as the Court held:

“…far from it being obvious to the average consumer that what is being offered is a different (and possibly inferior) product, the implication is that what is being offered is going to be equally beneficial for their pet but at a cheaper price….the average consumer - who no doubt will be considering the health and well-being of their pet - will assume that by being offered a "Swap" what they would be receiving in the alternative is something comparable in nature. In short, therefore, although it is true that the…advertisements only expressly refer to price….the average consumer of such products when offered the chance to save £X per day and/or to swap to an alternative product would assume that that alternative product was comparable in nature, composition, efficacy and/or quality.”

The Court will now determine at a second trial whether the defendant’s products are of a lesser efficacy and/or quality to the claimants’ products.

Moving forwards, what should traders do?

Be careful what you say when referencing other traders’ goods and services and always take independent legal advice prior to publication. Otherwise, you may end up on the wrong end of a claim for registered trade infringement.

For more information please contact Carl Steele.

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