When it comes to comparative advertising, it is wiser to know the law before you play the game, writes Charles Webster
THERE have been suggestions in the press ever since the new Trade Marks Act (No 194 of 1993) came into force on 1 May 1995, that comparative advertising is acceptable in South Africa. The issue has been complicated by the fact that the Advertising Standards Authority (ASA) has perhaps to some extent relaxed its rules relating to comparative advertising.
What advertisers appear to overlook, however, is the fact that the guidelines of the ASA do not affect the situation as far as trade mark infringement is concerned.
Thus, regardless of the rulings or views of the ASA or any other industry body, if comparative advertising falls foul of the provisions of section 34(1) of the Trade Marks Act, it will constitute trade mark infringement and the trade mark proprietor will be able to obtain the normal relief available in such actions which includes an interdict, damages and legal costs.
Comparative advertising, as the name suggests, is advertising where a party (the advertiser) advertises his goods or services by comparing them with the goods or services of another party. The other party is usually his competitor and is often the market leader in the particular trade.
The comparison is made with a view towards increasing the sales of the advertiser. This is typically done by either suggesting that the advertiser’s product is of the same or a superior quality to that of the compared product or by denigrating the quality of the compared product.
The more blatant form of comparative advertising refers to the product by name and this is generally known as comparative brand advertising.
Comparative advertising can, however, also occur without any use of the trade mark at all. For example, a motor car manufacturer might compare his product to the “luxury German cars” on the market. As such advertising does not contain any trade marks it is not relevant to the law of trade marks. It may, however, constitute a breach of the code of ethics of the ASA.
The issue we address here is whether comparative brand advertising constitutes trade mark infringement.
In its simplest form, such advertising would be blatant. For example, “CHEAP washing powder, it washes cleaner and brighter than OMO”, where OMO is a trade mark registered in respect of washing powders. Assuming that the use is unauthorised, the other provisions of s34(1)(a) infringement are clearly met as the identical mark is used in relation to the goods in respect of which the trade mark is registered and the use is clearly in the course of trade. Such advertisements would accordingly constitute trade mark infringement.
Comparative brand advertising does not have to be limited to the use of the identical trade mark as imaginative advertisers will often rely on a play of words. Where this is the case, the further enquiry of s34(1)(a), namely whether the trade mark used so nearly resembles the registered trade mark as to be likely to deceive or cause confusion, would come into play.
Similar additional considerations would apply where the use is in relation to similar goods. Adapting the example used above, an advertiser might state “CHEAP soap, it is the OMO of soaps”, where OMO, as before, is registered in respect of washing powders. Following the same reasoning given above, such conduct would constitute infringement in terms of s34(1)(b),similar goods infringement, on the assumption that soaps are similar goods to washing powders.
The aforementioned example also illustrates the possibility that comparative advertising could constitute infringement in terms of s34(1)(c), the dilution provisions, where the registered trade mark is well-known. A more classic example of comparative advertising constituting dilution would be “XYZ shoes, the ROLLS ROYCE of shoes”. Accepting that Rolls Royce is a well-known trade mark for purposes of s34(1)(c), the fact that there is no similarity between shoes and motor vehicles would not preclude the proprietor of the trade mark Rolls Royce from objecting to the use of its well-known trade mark in this context.
In conclusion, virtually any misuse of a person’s registered trade mark in advertising can constitute trade mark infringement and advertisers are advised to be well aware of this fact.
Charles E Webster is a partner of Spoor and Fisher, the foremost South African law firm specialising in intellectual property law and is also a council member of the South African Institute of Intellectual Property Law. This article is courtesy of the Institute of Marketing Management and the Professional Sales Association.