On June 12 2008 the European Court of Justice issued judgment in
O2 Holdings Limited and O2 (UK) Limited v Hutchinson 3G UK
Limited  C-533/06 and set out some interpretative
principles on the questions of trademark protection and comparative
advertising for identical or similar products.
O2 Holdings Limited and O2 (UK) Limited carry out business as
suppliers of mobile telephone services and advertise their products
using bubble images. They own two national figurative trademarks,
each consisting of a static picture of bubbles.
In 2004 Hutchinson 3G UK Limited, which is also a provider of
mobile telephone services, launched an advertising campaign in
which it compared the prices of its services to those rendered by
O2 and O2 UK. The television advertisement began by using the name
O2 and moving black-and-white bubble images, followed by imagery
relating to H3G and a message about H3G's comparatively cheaper
The question for the court was whether a competitor can use
another party's registered trademark in comparative
The court analyzed the nexus between the EU Trademark Directive
(89/104/EEC) and the EU Misleading Advertising Directive
According to Articles 5(1) and (2) of the Trademark Directive,
the owner of a registered trademark is entitled to prevent third
parties from using a sign which is identical or similar to its
trademark in the course of trade, provided that certain conditions
are met. Among other things, Article 5(3) provides that the
trademark owner may prevent third parties from using such a sign in
advertising. The use in comparative advertising of a sign that is
identical or similar to that of a competitor may constitute use
within the meaning of the Article 5 of the directive.
However, Recitals 2 to 6 in the preamble to the EU Comparative
Advertising Directive (97/55/EC) demonstrate a legislative
intention to promote comparative advertising, stating that
"comparative advertising can... stimulate competition between
suppliers of goods and services to the consumer's
advantage" (Recital 5), and that it "may be a legitimate
means of informing consumers of their advantage".
Therefore, in order to reconcile the protection of registered
trademarks with the use of comparative advertising, Articles 5(1)
and (2) of the Trademark Directive and Article (3)(2)(1) of the
Misleading Advertising Directive must be interpreted to mean that
the owner of a registered trademark is not entitled to prevent
third-party use of an identical or similar sign in comparative
advertising, subject to the conditions in Article (3)(2)(1) under
which comparative advertising is permitted.
However, according to Article 5(1)(b) of the Trademark Directive
and Article (3)(2)(1)(d) of the Misleading Advertising Directive,
comparative advertising is not permitted if there is a likelihood
of a confusion between the advertiser and a competitor or between
the advertiser's trademarks, goods or services and those of a
The court drafted a checklist of conditions for the prevention
of third-party use in advertising. It specifies that such use
be in the course of trade;
be without the trademark owner's consent;
be in respect of goods or services which are identical or
similar to those for which the mark is registered; and
affect or be capable of affecting the fundamental purpose of
the trademark (ie, to inform consumers of the origin of the goods
or services in question) by being likely to cause confusion on the
part of the public.
With specific reference to the case at issue, the court held
that H3G's use met the first three conditions, but not the
last, as H3G's use of bubble images similar to the
claimants' bubble trademarks was not likely to cause confusion
on the part of consumers - the advertisement did not imply a
commercial link between the claimants and H3G.
The court's decision is favourable to comparative
advertising, allowing the use of another party's registered
trademark in such advertising, provided that there is no risk of
confusion between the products in question.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
The former governing mayor of Berlin, Klaus Wowereit, a member of the German Social Democratic Party, SPD, has suffered a legal defeat in his year-plus battle with the German publishing house Axel Springer.
Securing effective legal protection for patents is a high priority for all businesses who seek the quick but safe entry of their new products into the commercial marketplace.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).