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
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,
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.