Diapositive 1

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Comparativeadvertising in EU
Joanna Piotrowska, Ph.D. Nestlé Regional IP
Advisor (Poland, Baltic States, Romania,
Bulgaria, Greece, Cyprus)
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Warsaw 1906
THE BEST IN THIS BUILDING
THE BEST IN TOWN
THE BEST ON THIS STREET
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EU Legislation
Directive 97/55/EC dated October 6th
1997 amending Directive 84/450/EEC
Implementation deadline 30 months after
publication (end of Y 2000)
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Definition advertising
Advertising making of a presentation in any
form to promote the supply of goods or services
(Art. 2.1 of the Directive)
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Definition comparative advertising
Comparative advertising means any advertising
which explicitly or by implication identifies a
competitor or goods or services offered by a
competitor
(Art. 2a of the Directive)
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Explicit identification
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Identification by implication
Mac
PC
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Competitor(S)
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Comparative advertising permitted if

• not misleading,
• compares goods or services meeting the same needs
  or intended for the same purpose,
• objectively compares one or more material,
  relevant, verifiable and representative features,
  which may include price
• does not create confusion between the advertiser
  and a competitor or between the advertiser's
  trade marks, trade names, other distinguishing
  marks, goods or services and those of a
  competitor
• it does not discredit or denigrate the trade
  marks, trade names, other distinguishing marks,
  goods, services, activities, or circumstances of
  a competitor
• it does not take unfair advantage of the
  reputation of a trade mark, trade name or other
  distinguishing marks of a competitor or of the
  designation of origin of competing products
• it does not present goods or services as
  imitations or replicas of goods or services
  bearing a protected trade mark or trade name.
• for products with designation of origin, it
  relates in each case to products with the same
  designation

(Art. 3a. 1 a-h of the Directive)
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Comparative advertising permitted if
it is not misleading
to the SIGNIFICANT number of RELEVANT CONSUMERS
reasonably well-informed, observant and
circumspect

• to be assessed based on
• nature of goods,
• consequences of mistake,
• ease to avoid,
• number of actually confused consumers.

C-120/96 GUT SPRINGENHEIDE
C-379/90 NISSAN
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When you lie
just make sure nobody reasonable believes you
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Comparative advertising permitted if
it compares goods or services meeting the same
needs or intended for the same purpose
objectively compares one or more material,
relevant, verifiable and representative features,
which may include price
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it may be indispensable to identify the goods
or services of the competitor making reference to
a trade mark or trade name of which the latter is
proprietor
such use of anothers trade mark, trade name or
other distinguishing marks does not breach this
exclusive right in cases the intended target
being solely to distinguish between them
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Comparative advertising permitted if it
does not present goods or services as imitations
or replicas of goods or services bearing a
protected trade mark or trade name
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Comparative advertising permitted if it
does not create confusion, does not take unfair
advantage of the reputation, does not discredit
or denigrate trade marks, trade names, other
distinguishing marks, goods or services
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Comparative advertising permitted if it
does not discredit or denigrate activities or
circumstancesof a competitor
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Comparative advertising permitted if
for products with designation of origin, it
relates in each case to products with the same
designation of origin
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European Court of Justice
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ECJ
C-112/99 TOSHIBA vs KATUN
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C-112/99 TOSHIBA vs KATUN
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C-112/99 TOSHIBA vs KATUN
Are the original product numbers (OEM)
distinguishing marks ?
Could be if identified by the public as origin
indicators (rather unlikely)
Does the display of (OEM) numbers alongside the
suppliers order numbers constitute a comparison
of goods?
It constitutes a positive statement that the two
products have equivalent technical features (mrvr)
Is unfair advantage taken of the (OEM) numbers if
they can be replaced by other description?
Not per se. An advertiser cannot be considered as
taking unfair advantage of the reputation
attached to distinguishing marks if effective
competition is conditional upon it.
Does it matter if such description would make the
communication more difficult?
Yes.
What are the criteria of assuming unfair
advantage taken of the (OEM) numbers?
Only when association of reputation
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ECJ
C-44/01 PIPPIG AUGENOPTIC vs HARTLAUER
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C-44/01 PIPPIG AUGENOPTIC vs HARTLAUER
Commercial company (branches spread throughout
Austria) with optical shelves
3 specialist optical shops in Linz
Official distributor of 60 suppliers
Little-known brands sold at low prices, if
well-known parallel imported
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C-44/01 PIPPIG AUGENOPTIC vs HARTLAUER
Titanflex Eschenbach spectacles
ZEISS lenses
Paid 5.785 ATS
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C-44/01 PIPPIG AUGENOPTIC vs HARTLAUER
Titanflex Eschenbach spectacles
Titanflex Eschenbach spectacles
ZEISS lenses
OPTIMED lenses
Price 5.785 ATS
Price 2.000 ATS
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C-44/01 PIPPIG AUGENOPTIC vs HARTLAUER
Is price comparison of brand-name product with
no-name product of equivalent quality permitted?
Yes, if the requirements prescribed by the
directive are met.
Is price comparison of above products permitted
when the manufacturer is not indicated?
When the brand may significantly affect the
buyers choice and the rival brand is
considerably less known, omission of the
better-known brand can be misleading.
Can differences in supply be regarded as
misleading if not mentioned?
Not per se. Only if they imply differences in
quality that the reasonable consumer would not
expect.
Is comparison discrediting if the compared
products are selected in a way that the price
difference is higher then average?
No, any obligation to restrict price comparison
to the average prices would be contrary to the EU
legislation.
Is comparison discrediting if the identification
of the competitor is not restricted to the extent
absolutely necessary (contains not only the name
but also a company logo or a front shop picture)?
Not per se.
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ECJ
C-59/05 SIEMENS vs VIPA
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C-59/05 SIEMENS vs VIPA
components compatible with SIMATIC controllers
SIMATIC programmable controllers and their
add-on components
System of order numbers eg. 6ES5 928-3UB21
System of order numbers eg. VIPA 928-3UB21
The order numbers correspond to those of Siemens
program modules
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C-59/05 SIEMENS vs VIPA
Is unfair advantage taken of a distinguishing
mark (order number) which is known where an
advertiser adopts in identical form the core
elements thereof?
Not per se.
Does it matter if such description is beneficial
to the consumers?
Yes, it should necessarily be taken into account.
Does it matter if such description is beneficial
to the advertiser?
This cannot alone be determinative of whether the
conduct is lawful.
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ECJ
C-356/04 LIDL vs COLRUYT
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C-356/04 LIDL vs COLRUYT
Both operate in Belgium a chain of stores which
essentially retail basic consumables
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• If you spent EUR 100 at Colruyts each week,
  then, according to our price index, you will have
  saved
• between EUR 366 and EUR 1129 in comparison with
  another supermarket (such as Carrefour, Cora,
  Delhaize, etc.)
• between EUR 155 and EUR 293 in comparison with a
  hard discounter or wholesaler (Aldi, Lidl, Makro)
• See for details www.colruyt.be

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C-356/04 LIDL vs COLRUYT
BASIC Absolutely the lowest prices in
Belgium. Even cheaper then the comparable
selection of the hard discounters (Aldi, Lidl)
and the Eerste prijs/1er prix products of other
supermarkets (such as Carrefour, Cora, etc.)

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C-356/04 LIDL vs COLRUYT
Is collective comparison of goods permitted?
Yes, provided it is based on the comparison of
pairs of interchangeable products.
Is the comparison not objective if the products
compared collectively are not expressly and
exhaustively listed in the advertisement?
No, it can still be objective.
Is general price level a verifiable feature ?
Yes, provided that the goods compared can be
individually identified on the basis of
information contained in the advertisement.
Is the compared feature verifiable only if it
can be verified by those to whom the
advertisement is addressed or is it enough if
the third parties can verify it?
It is enough that the third parties can verify it
but the addressee must be informed where and how
he can have it verified.
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ECJ
C- 381/05 VEUVE CLICQUOT PONSARDIN CIVCvs DE
LANDTSHEER
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C-381/05 VEUVE CLICQUOT vs DE LANDTSHEER
Bière blonde à la méthode traditionelle
La première bière BRUT au monde
CHAMPAGNEBIER
BRUT RÉSERVE
Reims-France
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C-381/05 VEUVE CLICQUOT vs DE LANDTSHEER
Is it a comparative advertising when only the
type of product is referred to?
Yes, if the consumers can identify the actual
competitor(s) or their goods.
Is it per se illegal to compare the products
which have a designation of origin with the ones
without it?
No, it is not forbidden per se.
Who is a competitor - anybody referred to by the
advertisement?
No, only the one who offers goods which are
substitutable in terms of current and future
consumer preferences, particular characteristics
of the promoted product, intended image of the
promoted product, all on the territory in which
the advertising is disseminated.
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ECJ
Benigna interpretatio
The conditions required of competitive
advertising must be interpreted in the sense most
favourable to it.
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ECJ
C-533/06 O2 vs 3G
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C-533/06 O2 vs 3G
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C-533/06 O2 vs 3G
When the competitive trademark is used in the
comparative advertising must this use be
indispensable?
???
What are the criteria of indispensability?
Does the indispensability requirement preclude
any use of a sign which is not identical but
closely similar to the registered trademark?
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Warsaw 1906
THE BEST IN THIS BUILDING
THE BEST IN TOWN
THE BEST ON THIS STREET
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QUESTIONS???