In the theatre of comparative ad disputes, the spotlight has recently fallen on the high profile litigation between telecoms giants O2 and 3 over comparative advertising. But two recent cases appearing before the Advertising Standards Authority highlight that day-to-day the preferred forum for knocking copy disputes in the UK these days is the self-regulatory body. Stephen Groom reports.
Who: Interprise Solutions LLP and Basic Research LLC t/a Voss Laboratories
Where: Advertising Standards Authority
When: June/July 2008
Law stated as at: 29 August 2008
Just as the verdict was being reached by the European Court of Justice ("ECJ") in the key "O2 v 3" comparative advertising case, the UK's advertising self regulatory body the Advertising Standards Authority ("ASA") dealt in quick succession with complaints over two comparative ads clearly naming competitors.
Key O2/3 case issue
In the O2 v 3 case (separately reported on marketinglaw.co.uk) the essential question was whether a TV ad for telco 3 infringed the registered trade marks of competitor O2 by showing prominent sequences of bubbles.
Key issues included whether the ad complained of "denigrated" the O2 brand or offering and whether the ad created any likelihood of confusion.
One of the ECJ's conclusions was that where advertisers published comparative ads and referred to their competitors by way of branding which was "similar" to a registered trade mark ("RTM") of that competitor (as opposed to exactly the same as it), then there could be no infringement of that RTM unless the depiction of the competitor's branding was likely to cause "confusion."
In a recent case before the ASA involving anti wrinkle cream from Basic Research/Voss Laboratories, confusion was also highly relevant.
Ad mentions three different brands
The case dealt with a magazine ad feature for Voss's Amatokin face cream. The copy talked about face cream products using stem cell technology. It said there were two, perhaps three products who were winners in the race to incorporate new stem cell technology.
The Amatokin product was named as one, another was the "most expensive" , Peau Magnifique " but "the biggest winner of all" the feature said, "could be StriVectin-HS Hydro Thermal Deep Wrinkle Serum."
The text highlighted an apparently key ingredient of the Amatokin product as a peptide called a "polypeptide." It went on to speculate as to whether the StriVectin product also contained this peptide, saying that StriVectin "had gained a worldwide reputation as the best deep-wrinkle serum on the market."
ASA asks: "Which product is being advertised"?
The Harley Medical Centre complained about various aspects of the ad feature, and the ASA itself chimed in with a concern that the ad could cause confusion as to which of the three products referred to was being advertised.
Voss Labs, the advertiser, said there could be no confusion as to what was being advertised since it was stated that the Peau product was a RVive product, and…er that seemed to be the end of their defence on the point.
The ASA was not persuaded. The copy was such, with all three brands mentioned in glowing terms, that readers were likely to infer that all three products were being marketed, whereas the intention was only to promote Amatokin.
So the complaint on this score was upheld. CAP Code clause 18.4 states that ads should not create confusion between marketers and competitors or between marketers' products and those of their competitors and this had been breached.
Interprise knocks Sage
In the second case, a direct mailing left readers in no doubt as to which product was being advertised.
Promoting an "Interprise Suite" software package, the mailing was headlined "Sick of Sage?". The letters S, O and S were far more prominent than the other letters of the headline and appeared in the distinctive green used in competitor Sage's branding.
The word SAGE is a registered trade mark owned by The Sage Group Plc and unsurprisingly the registration covers computer software.
"Bag of bits"
Under the headline was a visual depicting an office worker kneeling on a deserted beach in front of the letters SOS written in pebbles. The worker was stretching his hands up to the sky. The body copy referred to the various wonders of the Interprise offering, ending "one database, one business logic i.e. not a bag of bits."
Sage UK Ltd objected that the ad denigrated its product and took unfair advantage of its trade mark.
Interprise defended robustly, saying that "bag of bits" was fair because in their opinion nothing in the Sage product range integrated properly. They also referred to an industry magazine article quoting Sage's own MD as saying that "the software industry had let customers down badly-we've given them a bag of bits."
The advertiser also argued that "Sick of Sage?" was phrased as a question. So if in reality customers of Sage were not sick of Sage products, then Sage need not be concerned because these readers would ignore the ad. On the trade mark denigration point, Interprise alleged that only a stylised Sage logo was registered and they had not used this.
The ASA was not swayed by the Sage MD's quote as this was clearly referring to the industry as a whole. The regulator also noted that the word SAGE was registered as a trade mark as well as a logo.
The ASA noted that the ad drew attention to the Sage brand in a prominent way. The regulator believed that readers would infer from the headline and the picture that Sage users experienced distress when using Sage products and needed rescuing.
This together with the "bag of bits" reference denigrated Sage and its products in the ASA's view and took unfair advantage of its trademark. Complaint upheld.
Why this matters:
Neither of these two decisions is too surprising given the defences that were put up by the advertisers, although in the Voss Labs case one has to ask where the detriment was to either consumer or competitor where the advertiser was generous spirited enough to refer to its rivals in glowing and apparently non damaging terms.
What is of note is the cases' exemplification of what is now a clear and well established trend in cases where businesses feel unfairly attacked or abused in comparative ads.
Even if there appears to be a strongly arguable case in trade mark infringement, the courts are eschewed in favour of the cheaper and mostly far quicker route of a complaint to the ASA. Will this change now we have the final denouement in the O2/3 case and what some say is now greater clarity as to when a trade mark infringement claim in respect of knocking copy will likely succeed?
The writer's hunch is that brand owners will still tend to plump for the ASA if they continue to take robust decisions as they have in these cases.