Setback for O2 in Hutchison 3G UK Trademark Dispute

A legal opinion from the European Court of Justice has found that the use of a competitors trademark in an advertisement is permitted under EU advertising rules. The decison comes from an appeal by UK operator O2 over the use of its "bubbles" trademark in an advert by rival operator, Hutchison 3G UK.

The action was based on a series of television adverts run by Hutchison in March 2004 which started with the O2 trademark and a detail of call costs - then fading to Hutchison's 3 brand with its comparative costs.

O2, which is owned by Spain's Telefonica took Hutchison 3G UK to court in the UK claiming a breach of trademark.

In the course of the proceedings, O2 subsequently abandoned the claim of infringement of the O2 trade marks and accepted that the price comparison was true and that as a whole, the advertisement at issue was not misleading in any way and that, in particular, it did not suggest any form of trade connection between O2 and 3. The average member of the public would see the use of 02 and the bubbles as a reference to 02 and its imagery and realise that this was an advertisement by a trade rival, 3, claiming that its own service cost less.

The action for infringement, now directed only against the use of the bubbles images in the advertisement at issue, was dismissed by judgment of 23 March 2006. O2 appealed the judgment and it was later passed to the European Court of Justice.

A legal opinion has now been issued to the court by its advisors, and it is commonplace for the court to follow that opinion.

The key note from the legal advice seems to be that "if a link with the competitor is already established by means of the reference to O2's trade mark, without any objection on the subject from O2,  I [the legal advisor] do not see what unfair advantage H3G could gain from the additional use in the advertisement at issue of signs similar to the bubbles trade marks likewise owned by O2."

Posted to the site on 31st January 2008