Comparative advertising – a human right

The extent of the impact of the Human Rights Act on different areas of law is often speculated upon, however, it may still come as a surprise to some that the Act has an impact on issues of comparative advertising. The High Court in two recent decisions considered the impact of the Human Rights Act in deciding that it was not prepared to grant an injunction to prevent publication of this type of advertising. The Court concluded that the Act applied to comparative advertising and for it to grant an injunction where a human right may be affected, it must be satisfied “that the applicant is likely to establish that publication should not be allowed.” This is slightly more stringent than the usual test, which is whether a “real prospect of success” is shown.

Further, it was stated in Apollo that the opinion expressed by Jacob LJ in the Court of Appeal decision in O2 Holdings Ltd & another v Hutchison 3G Ltd, that use of a trade mark in comparative advertising is not “use” for the purposes of trade mark infringement under sections 10(1) and 10(2) of the Trade Marks Act 1994, is not law. However, in the absence of any decision from the ECJ as to the application of these sections to comparative advertising, the claimant was not able to establish that was is “likely” to succeed at trial.

These cases will make it considerably more difficult to obtain interim injunctions in comparative advertising cases.

In more detail.

Two recent cases, where interim injunctions were sought to prevent publication of comparative advertising, have demonstrated that advertising, as a form of expression, is protected by the Human Rights Act 1994.

Both claims were for trade mark infringement as both advertisements used the trade marks of the respective claimants.

• Red Dot Technologies Ltd v Apollo Fire Detectors Limited concerned a chart which compared, by part number and a very short description, the parties’ fire alarms and stated their equivalent products (if any). It intended to demonstrate that Apollo had a wider product range. Red Dot argued that the chart was misleading.
• Boehringer Ingelheim Limited and Others v Vetplus Limited concerned an advertisement by Vetplus which intended to show that claims made by Boehringer in relation to its dogfood supplements were inaccurate. Boehringer contended that the method used to measure the supplement levels was renowned as being unreliable (despite relying on the same methods to support the claims made on its own product labels) and that the advertisement would damage its reputation.

The usual test for granting an injunction, established in American Cyanamid Company v. Ethicon Limited of a “real prospect of success”, was displaced as a result of the right to freedom of expression being invoked. The HRA provides that an injunction will not be granted to restrain publication before trial “unless the court is satisfied that the applicant is likely to establish that publication should not be allowed”. This is a slightly higher test than a “real prospect of success".

Both cases referred to the decision in Cream Holdings Ltd. v. Banerjee, as authority for a more flexible approach to the HRA test. This allowed for “a lesser degree of likelihood” in certain circumstances, e.g. when a short-lived injunction is required or where the consequences of refusing an injunction would be particularly serious. The Court in Red Dot decided that this lesser standard applied as the trial was set to be only three weeks away. However, damage to reputation was not considered sufficiently serious to justify the lesser test in Boehringer.

Both interim injunctions were refused.

In Boehringer it was held that the claimant was unlikely to be able to show that the disparagement was wrong and misleading.

The Red Dot decision provided useful guidance on the opinion stated by Jacob LJ in the 02 Holdings Ltd & another v Hutchison 3G Ltd Court of Appeal decision, that use of trade marks in advertising may not be “use” of a trade mark for the purposes of trade mark infringement under sections 10(1) and 10(2) TMA. The Court made it clear that this opinion was not law as the case has been referred to the ECJ. However, pending further decision from the ECJ, it was decided that this area of law has been left with a level of uncertainty which made it impossible for Red Dot to be able to show that it was likely to establish a right to an injunction on these grounds. This is likely to make it difficult for future claimants to obtain an interim injunction on similar facts, at least until the ECJ has reached its decision and that decision has been applied by the English court.

Red Dot was, however, successful in showing the required likelihood of success for its claim under s.10(3) TMA, that the use took unfair advantage of, or was detrimental to, the distinctive character or reputation of its mark. Despite this, on the facts, the Court decided that the balance of convenience was not in favour of publication and refused to grant the injunction. The prejudice was considered fairly even as both sides could suffer loss if an injunction were granted or refused, but the impact on the defendant’s right to freedom of expression and the preference of the Court to preserve the status quo (as the chart was already in use) were sufficient to tip the balance in favour of the defendant.

These cases show that, particularly in the light of the impact of the Human Rights Act 1998, it is likely to be difficult to obtain an interim injunction to prevent publication of comparative advertisements, even where it is shown that the claimant is more likely than not to establish at trial that an injunction would be granted.