O2 Holdings Ltd & Anor v Hutchison 3G Ltd

O2 Holdings Ltd & Anor v Hutchison 3G Ltd

The Court of Appeal determined that the questions of whether use of a registered trade mark in comparative advertising falls within Article 5(1) of Directive 89/104, and whether there is a requirement of indispensability for such use under the Comparative Advertising Directive, are not acte clair and must be referred to the European Court of Justice. The court provisionally held that purely referential use in comparative advertising does not fall within Article 5(1), and that there is no requirement of indispensability for use of a trade mark in comparative advertising, provided the conditions of the Comparative Advertising Directive are met.

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
Civil Appeal / Court of Appeal Judgment on Reference to ECJ
Outcome
Reference to the European Court of Justice ordered; appeal not finally determined.
Legal Topics
Trade Marks, Comparative Advertising, Likelihood of Confusion, Defences to Infringement, Interpretation of Directives
Intellectual Property European Union Law Commercial Law Trade Marks Comparative Advertising Likelihood of Confusion Defences to Infringement Interpretation of Directives

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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

Civil Appeal / Court of Appeal Judgment on Reference to ECJ

Legal Issues

  1. 1 Does use of a registered trade mark in comparative advertising fall within Article 5(1) of Directive 89/104?
  2. 2 Is there a requirement of indispensability/necessity for use of a trade mark in comparative advertising under the Comparative Advertising Directive?
  3. 3 Does compliance with the Comparative Advertising Directive provide a defence to trade mark infringement?

Ratio Decidendi

The Court of Appeal determined that the questions of whether use of a registered trade mark in comparative advertising falls within Article 5(1) of Directive 89/104, and whether there is a requirement of indispensability for such use under the Comparative Advertising Directive, are not acte clair and must be referred to the European Court of Justice. The court provisionally held that purely referential use in comparative advertising does not fall within Article 5(1), and that there is no requirement of indispensability for use of a trade mark in comparative advertising, provided the conditions of the Comparative Advertising Directive are met.

Court Disposition

Reference to the European Court of Justice ordered; appeal not finally determined.

Orders

  • Three questions referred to the European Court of Justice for preliminary ruling.