The offending ad featured a concentrated circle of white bubbles
on a black screen, expanding to fill the screen as a voice over
explained, "On O2 pay-as-you-go the first three minute peak rate
call each day could cost you 75p”. Text at the bottom of the screen
then referred to O2. Later on in the 20-second ad, another voice
over advised that “with ThreePay that exact same call could cost
15p".
O2 went to court in an attempt to prevent 3 running the advert,
but failed to obtain an injunction. O2 then focused its attention
on the use of bubble imagery in the advert, claiming that this
breached its trade marks in bubble images.
In the High Court yesterday, Mr Justice Lewison ruled in favour
of 3.
He found that O2’s bubbles were sufficiently distinctive to give
the firm a valid trade mark in the images, and that 3’s use of
bubbles at the start of its ad was confusingly similar to some of
O2’s trade marked images – and was therefore in breach of those
trade marks. But, said the Judge, 3 had a valid defence under the
1997 Comparative Advertising Directive.
This Directive, implemented into UK law by The Control of
Misleading Advertisements (Amendment) Regulations 2000, allows
parties, where it is “indispensable, in order to make comparative
advertising effective, to identify the goods or services of a
competitor, making reference to a trade mark or trade name of which
the latter is the proprietor”.
According to the Judge, the Directive applied not only to the
use of registered trade marks, but could also apply to marks that
were similar to, but not identical with, the registered trade marks
– such as the bubble imagery used by 3.
O2 queried whether the use of the bubble imagery was
“indispensable” in making the comparison, given that the name brand
was also shown, but Judge Lewison dismissed the argument.
“The point at issue is trade mark infringement,” he said. “O2's
logo is a trade mark. Why should it be acceptable for H3G
[Hutchison 3G UK Ltd – which owns 3] to have used one of O2's trade
marks in a comparative advertisement, but not another?”
The Judge also considered whether there had been trade mark
infringement under a second ground – that O2’s bubble mark had a
reputation within the UK, and that 3’s use had taken unfair
advantage of, or had been detrimental to the distinctive character
or repute of the mark, effectively diluting it.
While he found, hesitantly, that one of O2’s bubble images had a
reputation within the UK, he could not find that 3’s bubbles would
have brought this particular image to mind. Accordingly he ruled
that there had been no trade mark infringement on this ground.
Even if there had been, he said, 3 would again have had a
defence under the Comparative Advertising Directive.
Taken as a whole, said the Judge, he could not regard the advert
as:
“anything other than a fair and objective
price comparison which does not take unfair advantage of or
denigrate O2's trade marks or brand. As I have said comparative
advertising is necessarily robust; and within the confines of the
Comparative Advertising Directive, advertisers should, in my
judgment be permitted to do what is needed to make the comparative
advertisement effective.”
Graeme Oxby, Marketing Director of 3 UK, welcomed the
ruling.
"O2 has tried to stop 3 using effective comparative advertising,
but fortunately for the UK consumer they've completely failed in
their aims. Our advert was a legitimate way for us to highlight the
great value we offered in comparison to O2,” he said.
O2 is considering an appeal, according to reports.
