OPINION: Orange victory provides second legal precedent

Orange’s stinging victory against Vodafone (Campaign, last week) means that advertisers can continue to use competitors’ trademarks for identification purposes without falling foul of the law.

Orange’s stinging victory against Vodafone (Campaign, last week) means

that advertisers can continue to use competitors’ trademarks for

identification purposes without falling foul of the law.



Vodafone, as is well known, objected to an Orange campaign last autumn

that used the line ‘on average Orange users save pounds 20 every month’

compared with Cellnet and Vodafone equivalent tariffs. When Orange

refused to withdraw the ads, Vodafone claimed trademark infringement and

malicious falsehood.



Vodafone, on paper, had a case worth fighting - in part because there

are limited precedents in the area of malicious falsehood and trademark

infringement. In its claim that the Orange copyline was misleading,

Vodafone argued that its average customer does not spend pounds 20 a

month, Orange customers spend more.



For its part, Orange persuaded Mr Justice Jacob to accept its claim that

a phone user who had been on Vodafone or Cellnet would indeed, on

average, save pounds 20 a month if he or she switched to Orange. In

time-honoured advertising fashion, Orange’s copyline could carry two

meanings, but the judge was satisfied that Orange’s interpretation was

the intended one. Judges, it is clear, will not impute malice just

because two companies are rivals.



Now the industry has two precedents for continuing to use competitors’

trademarks for identification purposes. The first, in February this

year, was Barclays’ claim against the Royal Bank of Scotland and Advanta

over comparisons with Barclaycard in a direct mail promotion for a new

Visa credit card. The mailing listed 15 benefits to potential users and

compared the card with others, including Barclaycard. Like Vodafone,

Barclays lost.



This latest ruling will certainly be welcomed by agencies that have been

responsible for the surge in comparative advertising since the 1994

Trade Marks Act.



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