Intellectual Property Law

Even more on O2 - this time, trade mark use

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat thinks it's worth giving some attention to the potential trade mark use issue in O2. It could have been argued that there was no infringement because H3G wasn't using the mark to identify its own services, but rather to identify O2's services, for the purposes of making a comparison with them.

The ECJ says at para.36:

"the use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser?s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104."

So the court seems to be implicitly suggesting, consistent with Adam Opel, that the use must be use by the defendant for his OWN goods. However, the court seems to think using someone else's mark in a comparative advert to make a comparison with the claimant's goods is use for the defendant's goods, rather than for the claimant's.

The IPKat is not sure this makes sense, because if you use someone else's mark in a comparative ad, you're using the mark to identify that someone else's goods (otherwise the comparison won't work). Perhaps the key questions is what is meant by use 'in relation' to goods under Art5(1)(a) or, under Art.5(1)(b), when the defendant's goods are 'covered' by the mark.

As a follow-up to that point, although Art.5(1)(b) uses the term 'covered by', s.10(2) of the UK Trade Marks Act 1994 uses the words 'in relation to'. Did the drafter of the TMA know something that we don't?

The plot thickens if you take a look at Art.12 (grounds for revocation). There the Directive talks about use ?in connection? with goods. Again, the TMA talks about use ?in relation? to goods.

Full post as published by IPKat on June 12, 2008 (boomark / email).