Factual Background

The Defendant posted a series of campaigns from August 2021 to June 2022 offering the Claimant’s trademarked products for sale on their website.

The Defendant’s own brand products were priced lower than the Claimant’s consistently across the website.

Whenever a customer chose one of the Claimant’s products, they would be offered the choice of clicking either an "Add to Basket" button or a "Save £[x] per day", "Swap and Save [£]" or "Try something new" button. Clicking the latter would take the customer to a page displaying the Defendant’s products.

The Claimant felt this amounted to a breach of the 2008 Regulations and has sued the Defendant for trade mark infringement.

What is Comparative Advertising?

Comparative advertising is a marketing technique whereby a company’s product/service is presented as being superior to a competitor’s using a comparator.

It is defined in The Business Protection from Misleading Marketing Regulations 2008 (the 2008 Regulations) as “advertising which in any way, either explicitly or by implication, identifies a competitor or a product offered by a competitor”.

Businesses are prone to risk in this regard as they often use a registered trade mark of a competitor without permission to do so.

A business whose advertisement contravenes the rules will be liable for trade mark infringement and possibly other causes of action depending on the circumstances.

The 2008 Regulations

The 2008 Regulations define ‘Advertising’ in s2(1) as:

“any form of representation which is made in connection with a trade, business, craft or profession in order to promote the supply or transfer of a product and “advertiser” shall be construed accordingly”.

Decision

As a preliminary issue, the Court was asked the following:

"What message is conveyed by the comparative advertising complained of?”.

The Claimant argued the Defendant’s advertisements implied the products offered were comparable in nature including the efficiency and quality of the products.

The Defendant argued that the advertisements only made a comparison as to the pricing of the products and were not presenting as matching the efficiency and quality of the Claimant’s products.

James Pickering KC (Deputy High Court Judge) found that the answer to the question as to what message was conveyed by the advertisements was that the average consumer would regard them as statements that the Defendant’s products offered in the alternative were comparable in nature and/or composition and/or specification to the relevant Claimant’s products including, inter alia, the efficacy and quality of those products.

There will be a second hearing to decide whether the Defendant’s products are of a lower efficiency/quality in comparison to the Claimants’ products.

This article covers trademark infringement in general terms, it cannot serve as a resource to advise you as it will largely depend on the individual circumstances.

If you need advice on any of the above issues, please contact Riyaz Jariwalla in the Commercial Litigation team at BPE riyaz.jariwalla@bpe.co.uk.