Burst bubbles for comparative advertising-burst bubbles for O2

The European Court Of Justice (ECJ) has ruled that owner of a trade mark can bring an infringement claim to prevent misuse of the mark in comparative advertising provided there is a likelihood of confusion affecting the trade origin.

This case (known as the “bubble case”) involved O2 and Hutchinson 3G. O2 brought infringement proceedings when Hutchinson used the bubble marks of O2 in a comparative television advert.

Although technical in nature the case clarifies the use in comparative advertising of a competitor’s trade mark.

Earlier decisions had been reached in the UK courts. The High Court had held Hutchinson had a defence to the infringement action whilst on appeal to the Court of Appeal certain questions were referred to the ECJ on the matter with reference to the Trade Marks Directive (89/104/EEC).

The ECJ answered only one of the three questions raised distinguishing the right to bar use of trade mark where there was a likelihood of confusion in the trademark’s indication of origin and ownership from use of the design identical or similar to the protected trade mark from one in which there was no such confusion.

What this means is that if you own a trade mark you can seek to prevent a rival’s comparative advertising using your trade mark where that might cause confusion in the mind of the public.

The judgement gives trade mark owners a certain peace of mind from confusing/misleading advertising by rivals.

O2 Holdings Ltd and O2(UK) Ltd v Hutchinson 3G UK Ltd