LAWFUEL – In December 2006, the Court of Appeal referred three questions to the ECJ in the O2 “bubbles” case. O2 had complained about Hutchinson 3G’s use of marks similar (but gloomy) to its bubbles trade marks in comparative advertisements. A-G Mengozzi has now provided his Opinion and has broadly concurred with the preliminary comments on the questions given by LJ Jacob.
The High Court had held that use of the bubbles marks could be trade mark infringement but that H3G had a defence to the same, whereas the Court of Appeal had thought that it was not trade mark infringement at all and, instead, the matter should only be considered with reference to the Comparative Advertising Directive. The AG’s Opinion follows that of the Court of Appeal and states that (1) comparative advertising claims should be considered solely by reference to the Comparative Advertising Directive, not the Trade Marks Directive; and (2) use of a competitor’s trade mark, or similar mark, in a comparative advertisement does not have to be indispensable for it to be permitted under the Comparative Advertising Directive.
If this opinion is followed by the ECJ, it will provide a favourable outcome for advertisers but a more worrying position for trade mark owners in the UK: any complaints about comparative advertising will only have to comply with the criteria set out in the Comparative Advertising Directive and therefore will only be considered by the advertising regulator (the ASA) rather than the courts.