Comparitive Advertising

The aim behind this concept is to allow honest (i.e. not misleading) comparison of the factors of one trader’s products with those of another such a comparison will inevitably involve the use of the trade marks associated with the products in question. In the absence of provisions controlling this, such use could constitute trade mark infringement.

The relevant section of the Trade Mark Act 1994 is section 10(6) which indicates that the rights granted to the trade mark proprietor, do not prevent “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.” Although this limitation is qualified by the inclusion of the caveat that the use must be “in accordance with honest practices”. The subsection further states that if the use does not satisfy this it will be treated as infringement “if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”

It is dealt with in more detail in Council Directive 84/450/EEC (as amended by Directive 97/55/EC) concerning misleading and comparative advertising (the ‘Comparative Advertising Directive’.) The UK implementing regulation is the Control of Misleading Advertisements Regulations 1988 SI 1988/915 (as amended by SI 2000/914) (the ‘Regulations’).

Regulation 2(2A) of the Regulations defines comparative advertising as meaning any advert which “explicitly or by implication, identifies a competitor or goods or services offered by a competitor”.

Under regulation 4A of the Regulations, using a trade mark within an advertisement for comparison purposes is permitted providing the following conditions are met:

  1. It is not misleading
  2. the comparison is between goods or services which meet the same need or have the same purpose
  3. the comparison is objective and is of “one or more material, relevant, verifiable and representative features of the goods or services”
  4. It does not cause confusion between the advertiser’s and competitors trade marks, trade names or goods or services
  5. “it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor”
  6. it does not take unfair advantage of the reputation of the competitor
  7. it does not present goods as being imitations or replicas of goods or services bearing the trade mark or trade name of the competitor.

If a special offer is included as part of the comparison clear details of this should be stated including:

  • start and finish date
  • whether the special offer is subject to the availability of the goods and service
  • any other specific conditions which may apply.

Misleading is defined under regulation 2(2) of the Regulations as meaning any advertisement which “deceives or is likely to deceive” people in a way that “is likely to affect their economic behaviour” so as to “injure or be likely to injure a competitor”.

The factors which should be taken into consideration in assessing whether an advert is misleading are set out in article 3 of the Comparative Advertising Directive:

“In determining whether advertising is misleading, account shall be taken of all its features, and in particular of any information it contains concerning:

a) the characteristics of goods or services, such as their availability, nature, execution, composition, method and date of manufacture or provision, fitness for purpose, uses, quantity, specification, geographical or commercial origin or the results to be expected from their use, or the results and material features of tests or checks carried out on the goods or services

b) the price or the manner in which the price is calculated, and the conditions on which the goods are supplied or the services provided

c) the nature, attributes and rights of the advertiser, such as his identity and assets, his qualifications and ownership of industrial, commercial or intellectual property rights or his awards and distinctions.”

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