The below was very timely ,having been published today;
une 12, 2008
O2's bubble bursts as it loses trademark case
Amanda Andrews and Michael Herman
O2, the British mobile operator, has lost its four-year battle with rival 3 over the use of its bubble trademark in a television advertisement.
O2 had claimed 3, which is part of Hutchison Whampoa, the Hong Kong conglomerate, had infringed its bubble trademark in an advert that first aired in 2004. The advert featured O2's signature bubbles alongside more attractive tariffs from 3.
The judgment, announced today by the European Court of Justice, found that 3 could use robust but fair advertising that incorporates the bubbles as long as it does not cause consumer confusion; 3 could be sued for infringement if it breaches these rules.
The European court ruled that four conditions must be satisfied for a proprietor to prevent the use of a trademark or a logo. These were that it must be used in the course of trade, without consent, in respect to similar or identical goods, and in a way likely to cause confusion.
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O2 initially took its case to the British High Court and Court of Appeal, before taking it to the European Court of Justice. The High Court dismissed the claim against 3 and, after an appeal by O2, Britain's appeal court put the matter to the European Court of Justice.
Giles Crown, 3's lawyer at Lewis Silkin, said: "The judgment confirms 3âs right to engage in robust but fair advertising.
"It is also great news for other advertisers engaged in comparative advertising. They are entitled to do so provided they donât cause any consumer confusion. However if they do, they could still be sued for trademark infringement. In this way the judgment balances the interests of the comparative advertisers and the rival brand owners.â
Other experts warned that despite the ruling, brand owners may still be able to block comparative advertising by using copyright laws.
Robin Fry, an intellectual property partner at law firm Beachcroft, said: "The freedom apparently given by this court ruling is very limited: most advertisers will still want to include a visual reference to their competitor's product - which remains unlawful if it means that any 'artistic work' is shown."
Andy Millmore, a partner at law firm Harbottle and Lewis, warned that the ruling could become a âcounterfeiters charterâ without further clarifications.
âThis judgment appears to be saying that if there is no question of someone being confused over whose product it is, then trademark laws do not engage. This is what will be worrying, and will be seen as part of a trend towards limiting trademark protection.
âFor example, somebody could say â buy my fake Rolex watch for five poundsâ. If the rationale in this ruling is extended beyond comparative advertising, then because theyâve made clear that the watch is fake - and therefore there is no possible confusion in the minds of the consumer - the logical extension is that the sale is also permissible," Mr Millmore said.
