O2 Holdings Ltd & Anor v Hutchison 3G Ltd [2006] EWCA Civ 1656 (05 December 2006)

O2 Holdings Ltd & Anor v Hutchison 3G Ltd [2006] EWCA Civ 1656 (05 December 2006)

The Court of Appeal determined that the legal questions regarding the scope of Article 5(1) TMD in the context of comparative advertising, the relationship between the CAD and trade mark defences, and the requirement (if any) of indispensability for use of trade marks in comparative advertising were not acte clair and required a reference to the European Court of Justice for authoritative interpretation.

Citation
[2006] EWCA Civ 1656
Parties
Claimant/appellant: O2 Holdings Limited (formerly O2 Limited); Claimant/appellant: O2 (UK) Limited; Defendant/respondent: Hutchison 3G Limited
Jurisdiction
England and Wales
Judgment Date
05 December 2006
Procedural Posture
Appeal From High Court (chancery Division) / Court of Appeal (civil Division) Reference to ECJ
Outcome
Reference to European Court of Justice (ECJ) for preliminary ruling; no final determination on merits pending ECJ decision.
Legal Topics
Trade Mark Infringement, Comparative Advertising, Defences to Trade Mark Infringement, Interpretation of EU Directives
Intellectual Property European Union Law Advertising Law Trade Mark Infringement Comparative Advertising Defences to Trade Mark Infringement Interpretation of EU Directives

Case Brief

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Parties

O2 Holdings Limited (formerly O2 Limited)

Claimant/appellant

O2 (UK) Limited

Claimant/appellant

Hutchison 3G Limited

Defendant/respondent

Procedural Posture

Appeal From High Court (chancery Division) / Court of Appeal (civil Division) Reference to ECJ

Legal Issues

  1. 1 Whether use of a competitor's trade mark in comparative advertising falls within Article 5(1) of the Trade Marks Directive (TMD)
  2. 2 Whether compliance with the Comparative Advertising Directive (CAD) provides a defence to trade mark infringement
  3. 3 Whether use of trade marks in comparative advertising must be 'indispensable' to be lawful

Ratio Decidendi

The Court of Appeal determined that the legal questions regarding the scope of Article 5(1) TMD in the context of comparative advertising, the relationship between the CAD and trade mark defences, and the requirement (if any) of indispensability for use of trade marks in comparative advertising were not acte clair and required a reference to the European Court of Justice for authoritative interpretation.

Court Disposition

Reference to European Court of Justice (ECJ) for preliminary ruling; no final determination on merits pending ECJ decision.

Orders

  • Three questions referred to the ECJ regarding the interpretation of Articles 5(1) and 6(1) of the Trade Marks Directive and Article 3a of the Comparative Advertising Directive.