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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
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ECJ rules in 'bubbles' case

The Court of Justice of the European Communities (ECJ) has ruled this morning in Case C-533/06 O2 Holdings v Hutchison 3G (the 'bubbles' case), in which mobile phone service provider O2 registered a number of images of bubbles as UK trade marks and H3G, a competitor, subsequently used similar bubble imagery in a comparative price advertisement for its own pay-as-you-go mobile phone service. Following a reference for a preliminary ruling from the Court of Appeal for England and Wales the Court has ruled today in the following terms:

"1. Article 5(1) and (2) of First Council Directive 89/104 ... and Article 3a(1) of Council Directive 84/450 ..., as amended ..., must be interpreted to the effect that the proprietor of a registered trade mark is not entitled to prevent the use by a third party of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions, laid down in Article 3a(1) of Directive 84/450, under which comparative advertising is permitted.

However, where the conditions required in Article 5(1)(b) of Directive 89/104 to prevent the use of a sign identical with, or similar to, a registered trade mark are met, a comparative advertisement in which that sign is used cannot satisfy the condition, laid down in Article 3a(1)(d) of Directive 84/450, as amended by Directive 97/55, under which comparative advertising is permitted.

2. Article 5(1)(b) of Directive 89/104 is to be interpreted as meaning that the proprietor of a registered trade mark is not entitled to prevent the use by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark was registered where such use does not give rise to a likelihood of confusion on the part of the public, and that is so irrespective of whether or not the comparative advertisement satisfies all the conditions laid down in Article 3a of Directive 84/450, as amended by Directive 97/55, under which comparative advertising is permitted".
This ruling would appear to emphasise the primacy of honest comparative advertising over the proprietor's ability to control third party uses of its trade marks. In trade terms, both trade mark protection and comparative advertising have the same aim, which is to enable consumers to receive reliable information which they can then use in order to make their purchasing decisions. This being so, it may be speculated that comparative advertising is valued more highly than the control of a single trade mark, since the former provides information concerning two or more branded goods or services, while the latter furnishes information concerning the goods or services of one single source.

Posted by: Blog Administrator @ 10.43
Tags: Comparative advertising, trade mark infringement,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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