Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

12 giugno 2008

The O2 case. Mons partuit nascitur mus...

Fabio Angelini

As our affectionate readers recall, sometime ago we had commented on AG Mengozzi’s opinion on the 02 case (case C-533/06, O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited.June 12, 2008) We remand you to that story for the facts which is not necessary to repeat it here again.

Now the ECJ has issued its judgment and personally I’m disappointed by this
decision. And not only because I fear that the ECJ’s resolution of the main question referred by the UK Court, by not entirely embracing the AG Mengozzi’ conclusions on the lawfulness of the use of identical or similar third party’s trademarks in comparative ads, could create a less clearer dividing line between what is lawful and permissible comparative advertisement and what is not.

I’m much perplexed that the ECJ has chosen not to rule on the indispensability notion, which, instead has, in my view, much greater relevance and impact of the day by day management and enforcement of trademark rights. The fact that the UK Court had requested, in the ECJ’s words, a preliminary ruling on the indispensability subject only to an affirmative finding on the main issue, does not and should have not prevented the ECJ to examine on its motion also this issue. Lazy lazy lazy….

Let’s turn now to the decisions itself. The main issue referred to the ECJ by the UK court was whether use of a competitor’s registered trade mark, in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, by another trader in an advertisement for his/her own goods/services, for the purpose of comparing the characteristics falls within either (a) or (b) of Article 5(1) of Directive 89/104.

The ECJ in its effort to reconcile the protection of marks with use of marks in comparative advertising, has held that a comparative advertisement which satisfies all the conditions under which comparative advertising is allowed, prevents a the proprietor of a trade mark to oppose the use, by a third party, of a sign identical with, or similar to, his/her mark.

However, it has also added (quite unnecessarily, because it is clear that what just stated is predicated upon the “satisfaction of all the conditions”) that if one of these conditions is not met i.e. if use is capable of creating a likelihood of confusion, then the comparative ad is no longer lawful and use of the mark
by the third party can be opposed.

In particular the ECJ spelled out a test which should guide into the assessment of the lawfulness of a comparative ad: if use of the competitor’s mark

1) is in the course of trade;

is without the consent of the proprietor of the mark;

is in respect of goods or services which are identical with, or similar to, those for which the mark is registered;

4) and affects or is liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public,

then use of the competitor’s mark is unlawful because the comparative ad does not fall into the defense provided by art. Article 3a[(1)] of Directive 84/450.

As a friend once said, the equation read from left right to right is obvious. From right to left, is banal.
It is not a surprise that starting from these premises, once the ECJ had found that in the case at issue use by H3G of bubble images similar to the trade marks did not give rise to a likelihood of confusion, it had to hold that the fourth condition was not satisfied and thus H3G’s activity was lawful.

Mons partuit nascitur mus….

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