The Advocate General's opinion, which is not binding on the Court, came in a case that was referred from the England and Wales Court of Appeal in December 2006.
The dispute arose when 02 accused rival 3 (owned by Hutchison 3G) of using imagery resembling its trade-marked bubbles in a 2004 advertising campaign. The voiceover in the advertisement claimed 02's prices were more expensive.
After a first instance judge ruled largely in favour of 3, the Court of Appeal referred three questions to the ECJ concerning the allowability of comparative advertising under the 1988 EU trade mark directive and 1984 misleading and comparative advertising directive.
In his opinion, delivered on January 31, Advocate General Mengozzi said that the use of a identical or similar sign in a comparative advertisement "is covered exhaustively" by the 1984 comparative advertising directive "and is not subject to the application of Article 5(1)(a) or (b)" of the trade marks directive.
Article 5(1)(a) allows trade mark owners to prevent the use of identical trade marks on identical goods and services and (b) allows them to prevent use of signs where "there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark".
Answering a second question referred from the Court of Appeal, regarding when comparative advertising is permitted under the 1984 directive, the Advocate General said that directive does not permit the use in a comparative advertisement of a competitor's trade mark "only when that use is indispensable for the purpose of identifying the competitor or the goods or services concerned".
In other words, advertisers who use rivals' marks in comparative adverts do not have to show that the use is "indispensable" for identifying the rival or the goods or services.
The Advocate General said he did not need to decide the third question referred by the Court of Appeal. His views broadly concur with those of Lord Justice Jacob, who wrote the Court of Appeal decision, and suggested his own answers to the questions referred.
In his opinion, the Advocate General also noted that the ECJ's case law on Article 5(1)(a) and (b) "does not appear, at least at first sight, to be at all consistent as to the conditions on which those provisions apply".
In particular, he said that use of another's trade mark, which does not cause confusion, "may apparently fall within the ambit of Article 5(1) ... on the basis of BMW, and may escape it on the basis of Hölterhoff and Adam Opel".
The Advocate General's Opinion is not binding on the ECJ, which should deliver its answers to the questions within the next 18 months. The case will then return to the UK courts.
