QuestionGood afternoon, I am after some advice in regards to how I can legally advertise a range of fragrances I sell. These fragrances smell very much like some of the perfumes produced by leading manufacturers. I know from some business partners that they use images and/or lists to compare our fragrances to those of the leading manufacturers, saying something like If you like Famous Brand A, you will love Our Brand B. The adverts do make it clear that it’s not the famous branded perfume that customers are buying. Is this style of advertising legal?
AnswerThank you for your question which raises a number of important issues. Basically, the purpose of your advertisement is to show how the smell of your perfumes compare to those of famous brands and then to persuade customers to purchase your brand instead. This is a grey area and unfortunately, I can’t give you a clear-cut answer that will cover all situations. Each advert will have to be looked at individually and its legality will very much depend on how you refer to the famous brand and how it is protected (for example, whether or not it is registered as a trademark). However, whether your adverts are legal or not, there’s a high risk that the leading manufacturers will complain about your adverts and try to stop you using them. There are three main arguments that they are likely to raise. They will probably say that:
- This is comparative advertising and your advert breaches the Advertising Standards Authority’s (ASA’s) CAP Code
- You are infringing their trademarks
- You are guilty of passing off
Is this comparative advertising?This could be seen as comparative advertising as you are comparing the scents of two different perfumes. As explained in my previous article, Comparative advertising: Three dos and don’ts for a legal campaign, comparative advertising is legal but it’s tightly regulated through the ASA’s CAP Code. Where you make a comparison with an identifiable competitor the ASA’s CAP codes says the advertisement:
- Must not be misleading as to the qualities of your product or their’s;
- Must compare products that meet the same need or intended purpose;
- Must objectively compare one or more material, relevant, verifiable and representative feature of those products, which may include price; and
- Must not create confusion between the marketer and its competitors or between the marketer’s product, trademark, trade name or other distinguishing mark and that of a competitor.
Ten top tips to keep your advertising copy legal It doesnt matter whether you’ve written the advertising copy yourself, or engaged an agency to write them for you, you’re ultimately responsible for them. __________________________________________________________________________________
Is this trademark infringement?As you can imagine, the famous brand perfumes are very protective of their trademarks. This has led to numerous cases of look-alike? and ‘smell-alike? claims of trademark infringement and passing off going through the courts with varying degrees of success. Trademarks can protect names, logos, phrases, shapes of packaging and even smells (although registering a smell is extremely rare). I have carried out a trademark search and the famous brand which you refer to in your advert has registered the name of the perfume and the shape of their bottle as trademarks. Actions that constitutes trademark infringement are set out in The Trade Marks Act 1994 (TMA). The Trade Mark Act says that an infringement of a trademark occurs when a third party uses, in the course of their trade, a sign which is:
- Identical to the registered trademark in relation to goods or services which are identical to those for which the trademark is registered;
- Identical to that trademark, for goods or services which are similar to those for which the trademark is registered, or similar to that trademark, for good or services which are similar or identical to those for which the trademark is registered, and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trademark; or
- Identical with or similar to that trademark where the trademark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade.