When advertising to consumers, comparing your product or service with a more well-known brand can be a useful way to attract attention. Grid Law founder David Walker explains the three arguments business owners will need to address before running comparative advertising.
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?
Thank 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
But are they right? Let’s take a look at each claim in more detail.
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.
An identifiable competitor is featured in your adverts and you are comparing the fragrances of two perfumes.
So, can you say something along the lines of “If you like “Famous Brand A”, you will love “Our Brand B”?
I can’t say for sure, but from a comparative advertising perspective, this should be OK if you have some verifiable evidence that customers do prefer your perfume to your competitor’s perfume.
The verifiable evidence may be the results of a customer survey in which the majority say that they do prefer the fragrance of your perfume.
If you don’t have this evidence already, I would obtain it before running the advertisement.
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.
In your advertisement, you are using images of the competitor’s perfume bottle and you refer to their brand name.
You’re not suggesting that your products are the famous brand and your branding is clearly different to the famous brand. However, the inclusion of the famous brand trademarks in your advertisement is clearly eye-catching and will encourage potential customers to look at your product in more detail.
The famous brand could, therefore, argue that you are taking an unfair advantage of their distinctive character and reputation. This would be an infringement if your branding was similar to theirs but it isn’t, so you should have a good defence against trademark infringement.
However, I would be very careful to avoid using the famous brand name as a keyword in any online advertising. If you did, there is a significantly increased chance that a claim against you for trademark infringement would be successful.
Is this passing off?
Passing off protects unregistered trademarks and goodwill (the reputation associated with the brand). There isn’t a statutory definition of passing off, as there is with trademark infringement, but case law says that passing off occurs when there is:
- A goodwill or reputation attached to the relevant goods or services.
- A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant.
- Damage to the claimant, by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant.
In some of the reported legal disputes involving the famous brands, passing off is often raised as an argument and they have often tried to “shoehorn” this into an unfair trading/unlawful competition argument.
They do this because, in the UK, we do not have specific unfair trading/unlawful competition laws as they do in other countries.
This argument has had limited success because the main guiding principle of claims of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man”
You’re clearly not doing this so I think that any claim for passing off that is brought against you is unlikely to succeed.
Where does this leave you?
As I said, this is a very difficult question to give a black and white answer to and the answer may differ depending on the contents of each individual advert where it appears.
From what I have seen, it should be safe (legally) for you to run the advert you sent me but regardless of this, I would expect complaints and threats of legal action from the manufacturers.
You, therefore, have to balance the risks of potential legal action against the commercial benefits of running the advert.
I hope this helps and if you need any further advice, please feel free to email me again at firstname.lastname@example.org
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