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 minor exceptions involving the use of a company name, forbidden by section 4(1) of the Trade Marks Act 1938. But in an increasingly pro-competitive environment there was virtually a moratorium on enforcement of section 4(1) rights in a number of trades – for instance comparative advertising in the field of motor cars was very common for a number of years before the 1938 Act was repealed. The 1994 Act now positively permits fair competitive advertising by section 10(6). This provides:
‘Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.
But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.’
In this case it is common ground that there is no infringement unless the use of Vodaphone in the comparison falls within the qualification of section 10(6). This qualification was considered by Laddie J in Barclays Bank Plc v. Advanta [1996] RPC 307. He held that it is for the plaintiff to show that the use falls within the qualification and that the test of honesty is objective (ie. would a reasonable reader be likely to say, upon being given the full facts, that the advertisement is not honest?). Laddie J gave as an example the case where the advertisement is ‘significantly misleading’. In trade marks, as [Counsel] rightly submitted, there is no ‘one meaning rule’. If a comparison is significantly misleading on an objective basis to a substantial proportion of the reasonable audience, it is not an ‘honest practice’ within the section.’
‘The meaning of the words concerned is the first matter to be considered, for their truth or falsity is to be tested against that meaning. The meaning is for the court to determine when a judge sits without a jury. Evidence of the meaning to others is inadmissible. The question: ‘is not one of construction in the legal sense. The ordinary man does not live in an ivory tower and he is not inhibited by the rules of construction. So he can and does read between the lines in the light of his general knowledge and experience of worldly affairs . . What the ordinary man would infer without special knowledge has generally been called the natural and ordinary meaning of the words. But that expression is rather misleading in that it conceals the fact that there are two elements in it. Sometimes it is not necessary to go beyond the words themselves, as where the plaintiff has been called a thief or a murderer. But more often the sting is not so much in the words themselves as in what the ordinary man will infer from them, and that is also regarded as part of their natural and ordinary meaning’, per Lord Reid in Lewis v The Daily Telegraph’
Jacob J discussed obiter the application of the ‘one meaning rule’ in malicious falsehood cases: ‘As a comparative stranger to this branch of the law I find the ‘one meaning rule’ strange, particularly for malicious falsehood. Without authority, I should have thought it would be enough to satisfy the criterion of falsity for the plaintiff to prove that the defendant made a statement which was false to a substantial number of people. That, for instance, is the position in passing off (a tort also concerned with false representations): for that tort it is enough to show that the representation fools some of the people, even if not most of them.
The reason for the libel rule in part relates to the entitlement of jury trial for libel (as Diplock L.J. explained in Slim). Save in exceptional circumstances the right to jury trial remains for libel and slander (see section 69(1) of the Supreme Court Act 1981) but there is no such right in relation to malicious falsehood. So it by no means follows that that historical reason for the rule in libel should apply to malicious falsehood. Another reason for the rule relates to the function of a jury in awarding damages for defamation: unless one has settled on a particular meaning one cannot judge the extent of the defamation. But in malicious falsehood damages are rather different: they are essentially compensatory for pecuniary loss as for most other torts. So again it does not seem necessarily to follow that the libel rule should apply to the tort. However, as I say, the parties were agreed that I should proceed on the basis that I am a notional jury identifying the single meaning of the words complained of. That is what I will do, and, as will be seen, in this case the point is academic.’
Jacob J looked at the question of meaning in marketing cases: ‘This is a case about advertising. The public are used to the ways of advertisers and expect a certain amount of hyperbole. In particular the public are used to advertisers claiming the good points of a product and ignoring others, . . and the public are reasonably used to comparisons- ‘knocking copy’ as it is called in the advertising world. This is important in considering what the ordinary meaning may be. The test is whether a reasonable man would take the claim being made as one made seriously, the more precise the claim the more it is likely to be so taken- the more general or fuzzy the less so.’
Judges:
Jacob J
Citations:
[1997] FSR 34, [1997] EMLR 84
Statutes:
Trade Marks Act 1994 10(6), Supreme Court Act 1981 69(1)
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 by:
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 – Cable and Wireless plc v British Telecommunications plc ChD 1998
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 . .
Cited – Quinton v Peirce and Another QBD 30-Apr-2009
One election candidate said that another had defamed him in an election leaflet. Additional claims were made in injurious falsehood and under the Data Protection Act.
Held: The claim in defamation failed. There were no special privileges in . .
Cited – Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd QBD 15-Jul-2009
The claimant said that the defendant’s characterisation of its own products as ‘Good for You’ by reference to a description saying that it did not include the claimant’s product as a component, was a malicious falsehood. The defendant sold other . .
Approved – MacMillan Magazines Ltd v RCN Publishing 1998
Neuberger J approved the statement of Jacob J as to comparative marketing. . .
Cited – Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd CA 2-Jun-2010
The claimant sold a sweetener ingredient. The defendant shop advertised its own health foods range with the label ‘no hidden nasties’ and in a situation which, the claimant said, suggested that its ingredient was a ‘nasty’, and it claimed under . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Media, Defamation
Updated: 27 June 2022; Ref: scu.221000
