The aim behind this concept is to allow honest (i.e. not misleading) comparison of the factors ofÂ one traderÂs products with those of another such a comparison will inevitably involve the use ofÂ the trade marks associated with the products in question. In the absence of provisions controllingÂ 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 rightsÂ granted to the trade mark proprietor, do not prevent Âthe use of a registered trade mark by anyÂ person for the purpose of identifying goods or services as those of the proprietor or a licensee.ÂÂ Although this limitation is qualified by the inclusion of the caveat that the use must be ÂinÂ accordance with honest practicesÂ. The subsection further states that if the use does not satisfyÂ this it will be treated as infringement Âif the use without due cause takes unfair advantage of,Â or is detrimental to, the distinctive character or repute of the trade mark.Â
It is dealt with in more detail in Council Directive 84/450/EEC (as amended by Directive 97/55/EC)Â concerning misleading and comparative advertising (the ÂComparative Advertising DirectiveÂ.) TheÂ UK implementing regulation is the Control of Misleading Advertisements Regulations 1988 SIÂ 1988/915 (as amended by SI 2000/914) (the ÂRegulationsÂ).
Regulation 2(2A) of the Regulations defines comparative advertising as meaning any advert whichÂ Âexplicitly or by implication, identifies a competitor or goods or services offered by aÂ competitorÂ.
Under regulation 4A of the Regulations, using a trade mark within an advertisement for comparisonÂ purposes is permitted providing the following conditions are met:
- It is not misleading
- the comparison is between goods or services which meet the same need or have the sameÂ purpose
- the comparison is objective and is of Âone or more material, relevant, verifiable andÂ representative features of the goods or servicesÂ
- It does not cause confusion between the advertiserÂs and competitors trade marks, tradeÂ names or goods or services
- Âit does not discredit or denigrate the trade marks, trade names, other distinguishingÂ marks, goods, services, activities, or circumstances of a competitorÂ
- it does not take unfair advantage of the reputation of the competitor
- 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 statedÂ 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 whichÂ Âdeceives or is likely to deceiveÂ people in a way that Âis likely to affect their economicÂ behaviourÂ so as to Âinjure or be likely to injure a competitorÂ.
The factors which should be taken into consideration in assessing whether an advert is misleadingÂ are set out in article 3 of the Comparative Advertising Directive:
ÂIn 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,Â composition, method and date of manufacture or provision, fitness for purpose, uses, quantity,Â specification, geographical or commercial origin or the results to be expected from their use, orÂ 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 theÂ goods are supplied or the services provided
c) the nature, attributes and rights of the advertiser, such as his identity and assets, hisÂ qualifications and ownership of industrial, commercial or intellectual property rights or hisÂ awards and distinctions.Â