Directive 2006/114/EC concerning misleading and comparative advertisements has recently been implemented in Ireland by the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 (the 2007 Regulations). The purpose of the 2007 Regulations is twofold: (1) to protect traders against misleading marketing communications and their often unjust effects; and (2) to specify the circumstances in which comparative marketing communications are prohibited. We shall focus here on the comparative marketing angle.

Comparative marketing is a complex area which potentially involves issues of trade mark infringement and in some circumstances passing off. A comparative marketing communication is defined in the 2007 Regulations as any form of communication made by a trader that explicitly or by implication identifies a competitor of the trader or a product offered by such competitor. A comparative marketing communication is prohibited if it:

• is misleading under Regulation 3 of the 2007 Regulations;
• is misleading under sections 43-46 of the Irish Consumer Protection Act 2007 (which concerns misleading commercial practices);
• does not compare products meeting the same needs or intended for the same purpose;
• does not objectively compare material features of the products (including price);
• discredits or denigrates trade marks, trade names etc;
• does not relate to products with the same designation of origin;
• takes unfair advantage of the reputation of a trade mark or name;
• presents goods or services as imitations of those bearing a protected trade mark or name;
• creates confusion among traders.

There is a broad definition of "representation" in the 2007 Regulations. It includes any oral, written, visual, descriptive or other representation by the trader including commercial, marketing or advertising communications and extends to any term or form of a contract, notice or other document relied on or used by a trader to promote the supply of a product.

An application may be made to the Circuit Court or High Court for an order prohibiting a trader from engaging in prohibited comparative marketing communications. It is not necessary to prove any actual loss or damage on the part of the person making the application, nor is it necessary to prove any intention or negligence on the part of the trader against whom the order is sought. In determining whether to make an order, the court will take into account, among other factors, the public interest.

Anyone proposing to engage in comparative marketing should also keep in mind the provisions of the Irish Trade Marks Act 1996. Section 14(6) provides that it is permissible to use another person's registered trade mark for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark, provided such use is in accordance with honest practices in industrial or commercial matters and such use should not without due cause take unfair advantage of, or be detrimental to, the distinctive character or reputation of the trade mark.

Businesses should therefore review (and amend where necessary) their current marketing practices to ensure they do not fall foul of the 2007 Regulations and the Trade Marks Act 1996.

John Whelan and Ciara Cullen

A&L Goodbody
International Financial Services Centre
North Wall Quay
Dublin 1
Ireland
Tel: +353 1 649 2234
Fax: +353 1 649 2649
jwhelan@algoodbody.ie
www.algoodbody.ie