Previously on marketinglaw we reported O2’s failed interim injunction claim against mobile telco competitor 3 over blue bubbles in 3’s comparative ad. O2 has registered a number of blue bubble images as trademarks. But the case continued with O2 trying to get the case referred to the European Court of Justice.
Topic: Comparative advertising
Who: O2 v Hutchison 3G
Where: Chancery Division of the High Court, London
When: March 2005
The UK court decided for a second time against O2 in its fight with mobile phone competitor Hutchison '3' over 3's use of bubble imagery in its advertising.
Previously, O2 had applied for an interim injunction preventing Hutchison's use of blue bubble images in comparative advertising making reference to O2 and its tariffs.
O2 had claimed that the use of these bubble images was an infringement of its own trademarks, a large number of which consisted of various images of bubbles in blue water.
Interim injunction claim turned down
The court had rejected the O2 claim for an immediate injunction. Undaunted, O2 continued with its action and its next pressure point was an application to the court for a reference to the European Court of Justice of no less than twelve questions arising out of the case.
At this point of course, it had not been long since the interim injunction had been refused, and it was still a good way off a full trial of the action. Normally there will only be a reference of a case to the ECJ at a later stage in the litigation process.
In this case, O2 argued that it was essential to refer these questions to the ECJ now, well in advance of the trial, because the answers to the questions would or might eliminate or at least reduce in scope material areas of the factual enquiries needed to bring the case to trial.
O2 refused again
In his judgement, Sir Andrew Morritt VC found against O2 and rejected the application for a reference to the ECJ.
Although the judge did not reject in principle the possibility of an early application to the ECJ for rulings in appropriate cases, he did not think this applied here. For instance, there was a counterclaim by Hutchison that none of the O2 trademarks on which the claim was based were legitimately on the register. 3's argument was that none of them were sufficiently distinctive to be registered at all. If Hutchison succeeded in this argument, then none of the 12 questions O2 wanted to take to the ECJ would arise.
Unclear what "sign" Hutchison used
The judge also felt that it was premature because the parties were in dispute as to what 'sign' had actually been used by Hutchison. This was crucial because trademark infringement could only be established in this case if it could be shown that the defendant had used a "sign" which was similar to the registered trademark of the claimant and that this also gave rise to a likelihood of confusion or association.
Sir Andrew Morritt said that it was by no means obvious what the relevant 'sign' in the Hutchison ad was. Was it, for instance, the entire sequence of images from start to finish of the ad, including material other than the bubble images, or was it each particular image that contained bubbles? This was a finding of fact which the trial judge would have to arrive at before applying the law and to refer these questions to the ECJ before those findings had been reached was premature and likely to be wasteful of costs and time.
Accordingly, the litigation continues without an ECJ reference at this point, subject of course to the possibility of an appeal on the question by O2 to the Court of Appeal, which may or may not be proceeding.
Why this matters:
One suspects there was a large tactical element in O2's application for this ECJ reference. It might have believed that opening up the possibility of a hearing before the ECJ and the considerable delay and inevitable cost that it involves might have persuaded Hutchison to sue for peace rather than see the action grinding on over some years. However, Hutchison did not submit to these and has once again prevailed in court.
We get no sense that this action may settle soon and we will be watching with interest future developments.