Groundbreaking European Trademark ruling

[domaingenius]

This ,if read carefully, will open up more opportunities for domainers perhaps ?;

June 12, 2008
O2's bubble bursts as it loses trademark case
Amanda Andrews and Michael Herman

O2, the British mobile operator, has lost its four-year battle with rival 3 over the use of its bubble trademark in a television advertisement.

O2 had claimed 3, which is part of Hutchison Whampoa, the Hong Kong conglomerate, had infringed its bubble trademark in an advert that first aired in 2004. The advert featured O2's signature bubbles alongside more attractive tariffs from 3.

The judgment, announced today by the European Court of Justice, found that 3 could use robust but fair advertising that incorporates the bubbles as long as it does not cause consumer confusion; 3 could be sued for infringement if it breaches these rules.

The European court ruled that four conditions must be satisfied for a proprietor to prevent the use of a trademark or a logo. These were that it must be used in the course of trade, without consent, in respect to similar or identical goods, and in a way likely to cause confusion.


O2 initially took its case to the British High Court and Court of Appeal, before taking it to the European Court of Justice. The High Court dismissed the claim against 3 and, after an appeal by O2, Britain's appeal court put the matter to the European Court of Justice.

Giles Crown, 3's lawyer at Lewis Silkin, said: "The judgment confirms 3’s right to engage in robust but fair advertising.

"It is also great news for other advertisers engaged in comparative advertising. They are entitled to do so provided they don’t cause any consumer confusion. However if they do, they could still be sued for trademark infringement. In this way the judgment balances the interests of the comparative advertisers and the rival brand owners.”

Other experts warned that despite the ruling, brand owners may still be able to block comparative advertising by using copyright laws.

Robin Fry, an intellectual property partner at law firm Beachcroft, said: "The freedom apparently given by this court ruling is very limited: most advertisers will still want to include a visual reference to their competitor's product - which remains unlawful if it means that any 'artistic work' is shown."

Andy Millmore, a partner at law firm Harbottle and Lewis, warned that the ruling could become a “counterfeiters charter” without further clarifications.

“This judgment appears to be saying that if there is no question of someone being confused over whose product it is, then trademark laws do not engage. This is what will be worrying, and will be seen as part of a trend towards limiting trademark protection.

“For example, somebody could say ‘ buy my fake Rolex watch for five pounds’. If the rationale in this ruling is extended beyond comparative advertising, then because they’ve made clear that the watch is fake - and therefore there is no possible confusion in the minds of the consumer - the logical extension is that the sale is also permissible," Mr Millmore said.

[DNQuest.com]

This has nothing to do with us. Hopefully you will stop posting it in every thread which is not related to this subject. This had to do with TM in reference to comparative advertising; meaning, using someone else's graphic TM in thier ads when comparing products or prices. This has nothing to do with domains, names, branding. This had to do with the graphic 3 used in their advertising.

[domaingenius]

This has nothing to do with us. Hopefully you will stop posting it in every thread which is not related to this subject. This had to do with TM in reference to comparative advertising; meaning, using someone else's graphic TM in thier ads when comparing products or prices. This has nothing to do with domains, names, branding. This had to do with the graphic 3 used in their advertising.

Sorry but you are wrong ,it IS to do with trademarks and does for sure have a bearinbg on domain names !. Read the text carefully and although this case was about O2 it also has bearing on all future Trademark cases in Europe
including of course domain names that are alleged to be breaching a trademark.

DG

As for posting in other threads. The case was and is relevant to Rolex as well as can be seen by last para.

DG

[flamewalker]

I disagree... It is about graphical trademarks and comparative advertising as DNQ stated... I don't see how a graphical tm has any relevance on a service mark... or domain disputes for that matter.

Interesting read nonetheless.

[DNQuest.com]

Sorry but you are wrong

Please, can you give us a synopsis of what you think this means please?

This was over the graphic used in the comparative ad.

[princehull]

Andy Millmore, a partner at law firm Harbottle and Lewis, warned that the ruling could become a “counterfeiters charter” without further clarifications.

“This judgment appears to be saying that if there is no question of someone being confused over whose product it is, then trademark laws do not engage. This is what will be worrying, and will be seen as part of a trend towards limiting trademark protection.

“For example, somebody could say ‘ buy my fake Rolex watch for five pounds’. If the rationale in this ruling is extended beyond comparative advertising, then because they’ve made clear that the watch is fake - and therefore there is no possible confusion in the minds of the consumer - the logical extension is that the sale is also permissible," Mr Millmore said.

To me it sounds like it would apply to anybody, not only advertisers. My understanding is the name or logo can be used as long as no one is confused as to where the product is coming from?????

[domaingenius]

Please, can you give us a synopsis of what you think this means please?

This was over the graphic used in the comparative ad.

Yes I agree that the case quoted related to a graphic, i.e. O2's graphic ,but case law is used in many different ways in Courts and it is the principles
of "A" case that can be applied to other circumstances;

Quote: "The European court ruled that four conditions must be satisfied for a proprietor to prevent the use of a trademark or a logo. These were that it must be used in the course of trade, without consent, in respect to similar or identical goods, and in a way likely to cause confusion.

Clearly this could well apply to domain names used for advertising/parking in
that all those 4 elements would need to be proven before the claimant/plaintiff could succeed. It applies not only to logos but also to trademarks themselves, as the Judgment made clear.

Without referring to the Full Judgment, something I do not have time to do now, I do not know what other points can be glean but as I say it is the principles of the Judgement that can be applied to any similar situation ,and that of course would include claims by TM holders against domain name
owners. Conversely perhaps you can advise why it does [U]not[U]
or could not apply to domains ?.

DG

[DNQuest.com]

Quote: "The European court ruled that four conditions must be satisfied for a proprietor to prevent the use of a trademark or a logo. These were that it must be used in the course of trade, without consent, in respect to similar or identical goods, and in a way likely to cause confusion.

Did you actually read the line you quoted? I emphasized the word "prevent" to make it clearer. But to break down:

Used in a course of trade - IE- in commerce= in the course of trade
Without consent - Easy one, you either the TM permission or you don't, domainers don't.
in respect to similar or identical goods - In the same TM category as the TM holder. You are and show competing ads or stealing traffic.
in a way likely to cause confusion - This could be the catch if anything, but parking will cause confusion unless the domain is developed in a different market than the TM. Could come under the unfair competition.

Now, this is basically the same formula as we have in The States. To satisfy prevention from use, all 4 must be met, and they usually do in most successful domain challenges. Again, you can't Cherry pick certain lines and broadly apply it. This case was to determine if a graphic in a comparative ad violated the TM. It was determined that there was no confusion since the ad clearly was for 3 and not O2.

This case centered around the graphic usage, not the word mark, there is a difference. So trying to apply this the domain industry won't be as successful as you may think.