| TRADE MARK — Proprietor’s rights — Limitations — Right to prevent use of sign identical or similar to registered mark — Whether extending to use of sign in comparative advertising — Council Directive 89/104/EEC, art 5 — Council Directive 84/450/EEC (as amended by Parliament and Council Directive 97/55/EC), art 3a(1)
O2 Holdings Ltd and another v Hutchison 3G UK Ltd (Case C-533/06); [2008] WLR (D) 193
ECJ: President of Chamber Jann, Judges Tizzano, Borg Barthet, Ilešič and Levits: 12 June 2008
{A registered trade mark proprietor (“proprietor”) could not rely on his trade mark rights to prevent the use of a sign similar or identical to his mark in a comparative advertisement if all the requirements for comparative advertising set out in Council Directive 84/450/EEC on comparative advertising, as amended, were satisfied, and, in particular, the use was not likely to give rise to confusion on the part of the public.
The First Chamber of the Court of Justice of the European Communities so held on a reference for a preliminary ruling by the Court of Appeal.
Art 5(1)(b) of Council Directive 89/104/EEC on trade marks entitles a proprietor to prevent third parties not having his consent from using in the course of trade a sign identical or similar to his mark for identical or similar goods or services “where there exists a likelihood of confusion on the part of the public”, and art 5(3)(d) includes among uses that may be so prohibited “using the sign … in advertising”. Art 3a(1) of Council Directive 84/450/EEC, as amended, specifies the conditions under which comparative advertising is permitted, including, under (d), that “it does not create confusion in the market place between the advertiser and a competitor or between the advertiser’s trade marks, trade names, other distinguishing marks, goods or services and those of a competitor”.
In an advertisement for its mobile telephone services, the defendant used bubble imagery reminiscent of bubbles in water that were the subject of two trade marks registered in the UK by the claimants for their mobile telephone services, and it was stated in the advertisement that the defendant’s product was cheaper than that of the claimants in specified respects. The claimants brought an action for trade mark infringement, in which it was common ground for the purpose of the action that in the advertisement the price comparison was true and there was no suggestion of a trade connection between the claimants and the defendant. The High Court dismissed the action, on the ground that the defendant had a valid defence stemming from Council Directive 84/450/EEC, as amended but, on appeal by the claimants, the Court of Appeal sought a preliminary ruling from the Court of Justice on questions raised.
THE COURT said that it was necessary to reconcile the trade mark and comparative advertising Directives, and ruled that on the proper interpretation of art 5 of Council Directive 89/104/EEC and art 3a(1) of Council Directive 84/450/EEC, as amended, a proprietor was not entitled to prevent the use by a third party of a sign identical or similar to his mark in comparative advertising where all the conditions laid down in art 3a(1) were satisfied. However, where there was a likelihood of confusion within art 5(1)(b) of Council Directive 89/104/EEC, it was not possible for the condition in art 3a(1)(d) of Directive 84/450 to be satisfied: “confusion” in those two provisions was to be interpreted in the same way. In the present case, it was accepted that the advertisement had not given rise to the likelihood of confusion on the part of consumers as to any commercial link between the claimants and the defendant.
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