The court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative advertising . . As long as the use of a competitor’s mark is honest, there is nothing wrong in telling the public of the relative merits of competing goods or services and using registered trade marks to identify them . . The onus is on the registered proprietor to show that the factors indicated in the proviso to section 10(6) exist . . There will be no trade mark infringement unless the use of the registered mark is not in accordance with honest practices . . The test is objective: would a reasonable reader be likely to say, upon being given the full facts, that the advertisement is not honest? . . Statutory or industry agreed codes of conduct are not a helpful guide as whether an advertisement is honest for the purposes of section 10(6). Honesty has to be gauged against what is reasonably to be expected by the relevant public of advertisements for the goods or services in issue . . It should be borne in mind that the general public are used to the ways of advertisers and expect hyperbole . . The 1994 Act does not impose on the courts an obligation to try and enforce through the back door of trade mark legislation a more puritanical standard than the general public would expect from advertising copy . . An advertisement which is significantly misleading is not honest for the purposes of section 10(6). . I venture with diffidence to make a number of additional observations. The advertisement must be considered as a whole . . As a purpose of the 1994 Act is positively to permit comparative advertising, the court should not hold words used in the advertisement to be seriously misleading for interlocutory purposes unless on a fair reading of them in their context and against the background of the advertisement as a whole they can really be said to justify that description; A minute textual examination is not something upon which the reasonable reader of an advertisement would embark;
The court should therefore not encourage a microscopic approach to the construction of a comparative advertisement on a motion for interlocutory relief.’
Judges:
Jacob J
Citations:
[1998] FSR 383
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Barclays Bank Plc v RBS Advanta ChD 8-Feb-1996
A party complaining about the use of a trade mark in a comparative advert is required to show some dishonesty. Section 10(6) of the Act was described as ‘home grown’ rather than derived directly from the Directive. . .
Cited – Vodafone Group Plc v Orange Personal Communications Services Ltd ChD 1997
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to . .
Cited by:
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – British Airways Plc v Ryanair Limited ChD 25-Oct-2000
The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood.
Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of . .
Cited – Tiscali UK Ltd v British Telecommunications Plc QBD 16-Dec-2008
The claimant internet provider claimed damages against the defendant who it said had written to its clients making false assertions about the claimant. An earlier defamation claim had been struck out, but the claimant now alleged interference with . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 June 2022; Ref: scu.194809