Note: This advice is given by the CAP Executive about non-broadcast advertising. It does not constitute legal advice. It does not bind CAP, CAP advisory panels or the Advertising Standards Authority.
The law on registered trade marks is in the Trade Marks Act 1994.
A trade mark is a sign that is capable of distinguishing the goods or services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes even sounds, gestures and possibly smells.
Signs, trade names or other marks used by organisations in the course of trade may be protected as registered trade marks. Use of a sign in advertising could amount to trade mark infringement in these situations:
(i) use of a sign that is identical to a registered trade mark for identical goods or services;
(ii) use of a sign that is similar to a registered trade mark for identical or similar goods or services and is likely to cause confusion about the origin of the goods or services;
(iii) if a registered trade mark has a significant reputation in the UK, use of a sign that is identical or similar to that registered trade mark for similar or dissimilar goods or services but, without due cause, takes unfair advantage of or is detrimental to the reputation of the registered trade mark.
A registered trade mark is not infringed if marketers use the trade mark in advertising for the purpose of identifying the goods or services as those of the trade mark owner, provided that they do so fairly and honestly. That often arises if a competitor’s trade mark is used in a comparative advertisement.
Marketers making comparisons must comply with the Control of Misleading Advertisements (Comparative Advertisements) (Amendment) Regulations 2000, which specify, among other things, that the comparison must not be misleading; must compare goods or services meeting the same needs or intended for the same purposes and must objectively compare one or more material, relevant, verifiable and representative feature, which may include price, of those goods or services.
Signs and trade names that are not registered may be protected under the law of ‘passing off’ if the sign or trade name has been sufficiently used to develop a trading reputation. Marketers whose advertising misleadingly takes advantage of a third party’s trading reputation, such as implying a commercial relationship with or endorsement by a third party if none exists, could be liable for passing off.
The Copy Advice team does not offer legal advice and marketers might want to get specialist legal advice from an IP lawyer.
Last modified : 17 April 2012