In a recent judgement in the case of Verimark – v – BMW the Supreme Court of Appeal (SCA) has reduced the scope of protection hitherto afforded by a registered trade mark, finding that Section 34(1)(a) of the Trade Marks Act which deals with primary infringement, cannot be interpreted to give greater protection that goes beyond protecting the mark as a badge of origin.
While the repealed 1963 Trade Marks drew a distinction in infringement proceedings whether the alleged infringers’ use was use as a trade mark or use otherwise than as a trade mark (in which event the trade mark proprietor was required to prove injury or prejudice) the primary infringement provisions of the 1993 Act do not draw such a distinction. Most commentators and the courts accepted that this included any form of use and, consequently, comparative brand advertising was found to constitute trade mark infringement.
That is no longer the case.
In the Verimark case, after considering recent developments in the European Court of Justice and the United Kingdom, Judge Harms formulated the primary infringement test as follows:
"What is, accordingly, required is an interpretation of the mark through the eyes of the consumer as used by the alleged infringer. If the use creates an impression of a material link between the product and the owner of the mark there is infringement; otherwise there is not. The use of a mark for purely descriptive purposes will not create that impression but it is also clear that this is not necessarily the definitive test."
It is no longer sufficient for the plaintiff to establish that the defendant is using the identical mark in relation to the goods in respect of which the mark is registered. He must now also establish that the manner in which the defendant is using the registered mark is such as to lead the consumer to view such use as creating a material link between the defendant’s product and the trade mark proprietor.
The facts in the Verimark case were very simple. Verimark, since 1996, had flighted a series of television commercials for its DIAMOND GUARD car polish, using different motor vehicles but more particularly BMW cars. A clip from one of its TV commercials appeared as background on the packaging, depicting the bonnet of a BMW with the BMW Logo visible. BMW was the registered proprietor of the BMW Logo in relation to car polish and instituted trade mark infringement proceedings. In dealing with the facts, Judge Harms stated:
"I am satisfied that any customer would regard the presence of the logo on the picture of the BMW car as identifying the car and being part and parcel of the car. It is use of the car to illustrate DIAMOND GUARD’s properties rather than use of the trade mark. No-one in my judgment would perceive that there exists a material link between BMW and DIAMOND GUARD or that the logo on the car performs any guarantee of origin function in relation to DIAMOND GUARD."
The same legal principles would apply to comparative brand advertising and all circumstances of "non trade mark" use by a Respondent. The typical comparative advertisement makes it clear that the use of the registered trade mark is not to draw a material link between the advertised product and the trade mark proprietor, but rather to compare certain properties of the respective products. This does not mean, however, that all forms of comparative advertising will be allowed. Firstly, the SCA made it clear that Section 34(1)(c) (the trade mark dilution provisions) are not limited to use as a trade mark. Secondly, the Code of the Advertising Standards Authority (ASA) contains guidelines as to what forms of comparative advertising may be acceptable. These criteria need to be viewed in the context of the entire ASA Code, but for present purposes, the main criteria are that the facts must be capable of substantiation, must not be misleading or disparaging; the guiding principle being that products and/or services should be promoted on their own merits and not on the demerits of competitive products.
Spoor & Fisher