The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings did not apply to trade mark infringement.
Held: The rule against prior restraint applied to actions involving reputation, but did not apply to actions alleging trade mark infringement, which protect a property right.
Jacob LJ said: ‘I think a man who makes a damaging statement involving use of another’s mark which he reasonably believes to be true at the time but which later turns out to be untrue would not be acting in accordance with an honest practice if he were not prepared to compensate the owner of the damaged mark. He can express his honestly held opinion, but unless that is on the basis that he will compensate his trade rival if it is proved to be wrong, he is not acting in accordance with an honest practice and will be adjudged to infringe.
. . Indeed the Comparative Advertising Directive (97/55/EC) rather confirms the position. It is not in dispute that a comparative advertiser will be acting in accordance with ‘honest practices’ provided he does so in accordance with the conditions of Art 3a of the Misleading Advertising Directive (84/450/EC). One of those conditions is that the advertising must not be misleading. If an advertisement is in fact misleading, however honestly the advertiser believed what he said at the time, he would be outside the Directive.’
However: ‘A man who finds his trade mark disparaged by a rival trader in a comparative advertisement can obtain a prior restraining order only if he can show that it is more likely than not that the disparagement is wrong and misleading. Unless he can do that, then his rival, both for his own commercial interests and in the interests of the public, ought to be free to say that which he honestly believes.’ The claimant had not achieved the necessary standard and his appeal failed.
Judges:
Jacob LJ
Citations:
[2007] EWCA Civ 583, Times 27-Jun-2007, [2007] FSR 29
Links:
Bailii
Statutes:
Comparative Advertising Directive (97/55/EC), Misleading Advertising Directive (84/450/EC, Control of Misleading Advertisement Regulations 1988
Jurisdiction:
England and Wales
Citing:
Cited – Bonnard v Perryman CA 2-Jan-1891
Although the courts possessed a jurisdiction, ‘in all but exceptional cases’, they should not issue an interlocutory injunction to restrain the publication of a libel which the defence sought to justify except where it was clear that that defence . .
Cited – Bestobell v Bigg 1975
The rule in Bonnard preventing prior restraint in defamation proceedings applies also in the context of an allegation of malicious falsehood. . .
Cited – American Cyanamid Co v Ethicon Ltd HL 5-Feb-1975
Interim Injunctions in Patents Cases
The plaintiffs brought proceedings for infringement of their patent. The proceedings were defended. The plaintiffs obtained an interim injunction to prevent the defendants infringing their patent, but they now appealed its discharge by the Court of . .
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 – O2 Holdings Ltd and Another v Hutchison 3G Ltd CA 5-Dec-2006
The court faced an allegation based on allegedly false comparative advertising, and referred to the European Court the question: ‘Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor . .
Cited – Service Corporation International plc v Channel Four Television ChD 1999
The court considered an application for an interlocutory injunction to restrain a broadcast, based on copyright. The defendant argued that this was merely an attempt to circumvent difficulties in a defamation action.
Held: Where an interim . .
Cited – Microdata v Rivendale 1991
The need to protect freedom of speech overrode the need to protect a person’s trade reputation. . .
Cited – Greene v Associated Newspapers Ltd CA 5-Nov-2004
The claimant appealed against refusal of an order restraining publication by the respondent of an article about her. She said that it was based upon an email falsely attributed to her.
Held: ‘in an action for defamation a court will not impose . .
Cited – Harrods Ltd v Harrodian School CA 3-Apr-1996
No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ . .
Cited – Cream Holdings Limited and others v Banerjee and others HL 14-Oct-2004
On her dismissal from the claimant company, Ms Banerjee took confidential papers revealing misconduct to the local newspaper, which published some. The claimant sought an injunction to prevent any further publication. The defendants argued that the . .
Cited – Consorzio del Prosciutto di Parma v Marks and Spencer plc 1990
Italian regulations are not directly enforceable within the United Kingdom. . .
Cited by:
See Also – Boehringer Ingelheim and others v Vetplus Ltd CA 5-Jul-2007
. .
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.
Media, European, Intellectual Property, Torts – Other
Updated: 24 November 2022; Ref: scu.253536
