22 September 2017Trademarks

Marques 2017: UK and US lawyers discuss comparative advertising

There are various routes and opportunities for comparative advertising in the UK, but there are reputational risks, as many have found out.

That’s according to Mishcon de Reya partner Sally Britton, who was talking on a panel at the Marques 31st Annual Conference in Prague.

Chaired by Jesse Hofhuis of Hofhuis Alkema Groen, the session examined the options for protecting advertising campaigns and graphic designs on the basis of copyright and advertising law.

Britton mentioned cases including French Connection UK, which was subject to a two-year pre-vetting of every advertising campaign it ran, following the release of free condoms and t-shirts with a sexual message.

“In a dynamic world such as marketing, having to get campaigns vetted before releasing them can be a time-consuming process.

"There are several routes some can take if they feel an advert is unfair. For example, in the UK, the Advertising Standards Authority have the power to remove ads they deem inappropriate,” she said.

The panel further discussed slogans, fonts and adverts as source identifiers and whether they are trademarks.

For example, Mastercard ran a famous marketing campaign listing various prices at events, finishing off the advert with “there are some things money can’t buy; for everything else there’s Mastercard”.

Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner looked at the issue from a US angle.

She discussed colour marks, following a discussion on a case in Europe involving Red Bull, which is seeking protection for its blue and silver can as a colour mark.

“We differ to our European counterparts in that we have to be able to prove that consumers do recognise a set of colours as a source identifier,” she said.

“This is one of the reasons surveys play an important role and litigation can be so expensive. It is a high bar to prove (that colours are a source indicator), which is a big issue for rights holders … and a significant investment in time and/or money”.

The Marques conference finishes today, September 22.

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