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SAMPLE ASSIGNMENT COMPARATIVE TRADEMARK LAW (UK)

IMPORTING

REFERENCE

AND

COMPARATIVE

ADVERTISEMENT.

CRITICALLY DISCUSS THE ABOVE TERMS.

BY AHMAD RAWI THE WRITER CAN BE CONTACTED AT SCHOLARS.ASSIST@GMAIL.COM

1.

BACKGROUND

The term importing a reference originated from the now replaced United Kingdoms Trade Mark Act 1938 (in particular, Section 4(1)(b) of the 1938 Act) and thereafter found its way to various trade marks legislations in the commonwealth jurisdictions, among them, Malaysia.In order to discuss the what constitute importing a reference, this paper will trace its origin, development and its current status today and evaluate whether importing a reference and comparative advertising are two different, separate concept albeit with only a very thin line separating them.

As mentioned above, the term is a creation of statute, namely the now replaced United Kingdoms Trade Mark Act 1938 (in particular, Section 4(1)(b) of the 1938 Act).The United Kingdoms registered trade marks law as it stands today is the result of a myriad of successive legislations which cumulated in 1994 when the United Kingdom started with a clean slate in so far as registered trade marks are concerned with the introduction of the new United Kingdoms Trade
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Marks Act 1994. The 1994 Act, among others, attempts to rectify the legal quandary brought about by Section 4(1)(b) of the Trade Marks Act 1938, a section which in turn was ironically inserted to rectify the legislative loopholes pertaining to comparative advertisement as a result of the House of Lords judgment in the case of Irvings Yeast-Vite v. Horsenail (1934) 51 R.P.C. 110.

II.

COMPARATIVE ADVERTISING DEFINED

The term comparative advertising has not been defined anywhere in both the UKs Trade Marks Act 1938 and Trade Marks Act 1994. As such, this paper has to resort to definition as provided by the industry.

From the advertising industry perspective, comparative advertising refers to specific campaigns that directly compare ones product attributes with those of its competitors1.Comparative advertising is but a category of advertising method employed by advertisers to promote their products. Broadly speaking, advertisements fall into three categories2:

1.

Non-comparative advertisement whereby such advertisement refers only to one brand of product and does not compare that product with other product either explicitly or impliedly.

2.

Indirectly comparative advertisement whereby such advertisement refers only to attributes of one brand of product but is fashioned in such a way that by implication the advertisement also refer to the attributes of product belonging to the advertisers rivals or

Yeshin, T.(2006) Advertising. London : Thomson Learning,p.7 Isaac,B.(2000) Brand Protection Matters. London : Sweet & Maxwell, p.193

competitors. Ann example of this type of advertisement is the well known tagline for Carlsberg lager in the UK Probably the best lager in the world- which by implication conveys to the public that other brands of lager are probably lower in standard than that of Carlsberg.

3.

Comparative advertisement whereby such advertisement explicitly compares attributes of one brand of product with that of another competing brand of product, the latter being specifically named and presented in such a way to be recognizable.

Despite the absence of definition of comparative advertising in the UK Trade Marks Act 1938 and UK Trade Marks Act 1994, the term comparative advertising however has been defined statutorily in Section 2(1) of the UKs Business Protection from Misleading Marketing Regulations 2008 as advertising which in any way, either explicitly or by implication, identifies a competitor or a product offered by a competitor.

III.

DOES IMPORTING A REFERENCE AND COMPARATIVE ADVERTISING

REFER TO THE SAME CONCEPT?

This paper takes the stand that the term importing a reference and comparative advertising refer to the same concept based on the following discussion in Part IV of this paper i.e there is no thin line that separates them-they refer to one and the same concept. However, in the UK, importing a reference/comparative advertising is now allowed under the current trademarks legislation in force, namely, the UK Trade Marks Act 1994 provided certain conditions are fulfilled, in other
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words, importing a reference is still an infringement but there are certain exceptions to it which the defendant can resort to. This paper also notes that as far as Malaysia is concerned, comparative advertising is still prohibited by virtue of Section 38 (1)(b) and (c).

IV.

DISCUSSION

A.

Treatment of Comparative Advertising Under Trade Mark Act 1905

In so far as use of a registered trademark in advertisement is concerned, the now repealed UK Trade Marks Act 1938 by virtue of Section 4(1)(b) provided blanket protection for proprietors of registered trade marks and registered users of such trade marks who used the same by way of permitted use (licensees) against unauthorized use of such trade marks by a third party in an advertisement. The effect of the said provision is the curtailment of comparative advertising which exactly was the reason why Section 4(1)(b) was inserted in the Trade Marks Act 1938 in the first place. Prior to 1938, the Trade Marks Act 1905 (now repealed) had been contented with giving to the registered proprietor of a mark the exclusive right to the use of such mark, with the boundaries of such exclusive rights to be determined by the court3.The relevant provision of Section 39 of the Trade Marks Act 1905 stated that : Rights of proprietor of trade mark 39. .the registration of a person as proprietor of a trade mark shall, if valid,

give to such person the exclusive right to the use of such trade mark upon or in connection with the goods in respect of which it is registered.
3

White, T.A.B. et. Al.(1986) Kerlys Law of Trade Marks and Trade Names. London : Sweet & Maxwell,p.261.

The locus classicus for the interpretation of Section 39 of the above provision is the decision of the House of Lords in the case of Irvings Yeast-Vite v. Horsenail (1934) 51 R.P.C. 110. In that case, an appeal from the judgment of the Court of Appeal, the House of Lords had the chance to consider the precise ambit of such exclusive right in Section 39 of the Trade Marks Act 1905.The appellant in that case was the registered proprietor of the trade mark Yeast-Vite. The respondent sold similar preparation manufactured by them packed in bottles attached with the labels Yeast Tablets, a substitute for Yeast-Vite. The appellant brought an action for infringement of trade mark which was decided against them by the High Court and Court of Appeal. On appeal to the House of Lords, the Law Lords dismissed the appeal and held that if the registered trade mark in question is not used in a trade mark sense i.e. to indicate trade origin of the goods but merely as descriptive term, such use will not constitute infringement of the said trade mark.

According to the House of Lords, the exclusive right referred to in Section 39 of the Trade Marks Act 1905 only mean right conferred on the proprietor to be known as the origin (source or maker) of the goods. Based on this line of reasoning, on the fact of the case, the House of Lords found that there was no infringement on the part of the respondent as in that case, the trade mark Yeast-Vite had not been used by the respondent in a trade mark sense i.e. in the sense of indicating that the respondents preparations actually originated from the appellant but instead the respondent had used the trade mark Yeast-Vite to distinguish their (the respondents) product (Yeast Tablets) from that of the appellants (Yeast-Vite) by stating that their product, Yeast Tablets, was a substitute for the appellants product,Yeast-Vite.

B.

Treatment of Comparative Advertising Under Trade Marks Act 1938 (The Origin of the

Term Importing a Reference)

In the wake of the House of Lords judgment in Irvings Yeast-Vite case above, the UK Parliament was forced to deal with the Trade Marks Act 1905 statutory oversight with regards to comparative advertisement and as far as comparative advertising is concerned, the narrow construction of the meaning of Section 39 of Trade Marks Act 1905 by the House of Lords in Irvings Yeast-Vite has lead to the revamp of the Trade Marks Act 1905 in the UK which brought about the introduction of the new subsection 4(1)(b) in Trade Marks Act 1938. The brelevant provision of Section 4 (1)(b) of the Trade Marks Act 1938 stated that :

Right given by registration in Part A, and infringement thereof 4.-(1) Subject to the provisions of this section, and of section seven and eight of this Act, the registration (whether before or after the commencement of this Act) of a person in Part A of the register as proprietor of a trade mark (other than certification trade mark) in respect of any goods, shall if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling itin the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either 6

(a). (b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."

Despite being criticized by those who were unfortunate enough to wade through its semantic obscurity4, the existence of Section 4(1)(b) in the legislation governing registered trade marks was cherished by the registered trade marks proprietors who had been relying on that section for over 50 years in their effort to prevent third parties from using their registered trademarks in advertisements without their consent5.

The operative words that bring Section 4(1)(b) to life are importing a reference to the proprietor or registered user of the trademark. The Trade Marks Act 1938 does not provide any illustration for what kind of use of a mark will constitute importing a reference and thus whether the use of a mark will constitute importing a reference to the proprietor or registered user must be decided on a case by case basis6.
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In Bismag Ltd v Amblins (Chemist) Ltd [1940] 57 RPC 209, McKinnon LJ (dissenting) described S. 4(1)(b) of the Trade Marks Act 1938 in the following words :I doubt if the entire statute book could be successfully searched for a sentence of equal length which is of more fuliginious obscurity. See also Rt. Hon. Lord Millett, Construing Statutes,(1999) Vol.20(2) Statute Law Review,p.107-110 at p. 107 whereby Lord Millett, one of the Lord of Appeal in ordinary described S.4(1)(b) of the Trade Marks Act 1938 as, in his knowledge, the only one example of a statute where sheer complexity defeated comprehension.
5

Isaac,B.(2000) Brand Protection Matters. London : Sweet & Maxwell, p.200

White, T.A.B. et. Al.(1986) Kerlys Law of Trade Marks and Trade Names. London : Sweet & Maxwell,p.277.

This paper stance as stated in Part III above is that importing a reference and comparative advertisement refer to one and the same concept as revealed by case law on the interpretation of Section 4(1)(b) of the Trade Marks Act 1938. Under Section 4(1)(b) of the Trade Marks Act 1938, infringement against a registered trademark will occur if the registered trade mark were used in an advertising circular or other advertisement issued to the public, because such use is deemed to import a reference to the proprietor of the trademark.

The seminal case for discussion on S.4(1)(b) of the Trade Marks Act 1938 is Bismag Ltd v. Amblins (Chemist) Ltd [1940] 57 RPC 209. In this case, the plaintiffs were registered proprietors of a trade mark known as Bisurated for medicines. The defendants were selling, in addition to their own proprietary medicines, the proprietary medicines of other manufacturers including those of the plaintiffs. The defendant issued a pamphlet in which , among others, they provided price comparisons table between their own proprietary medicine (under the trade mark Bismuthated magnesia tablets) and the plaintiffs Bisurated magnesia tablets.The House of Lords held that the defendant had used the word Bisurated in a trade mark sense and not in a descriptive sense in this case.

According to Meade, under Section 4 of the Trade Mark Act 1938 as interpreted in Bismag case, there will be infringement regardless of the content of advertising (original emphasis) and the only escape for the defendant is to challenge the validity of the trademark in question. Accordingly, the plaintiff who had a registration for such trade mark is in a very strong position where such trade

mark is indeed use without the registered owners permission in advertisement7. In other word, to import a reference or importing a reference is the same with comparative advertising.

Based on this approach of construction, Section 4(1)(b) effectively made the use of another plaintiffs trade mark by the defendant in an advertising circular or other advertisement issued to the public as akin to a strict liability offence which might give rise to an action for infringement.

V.

CONCLUSION

The Trade Marks Act 1994 does away with the term importing a reference previously found in Section 4(1)(b) of the repealed Trade Marks Act 1938. The Draconian Section 4(1) (b) is replaced with a more liberal and clearer provision in the Trade Marks Act 1994. The pertinent section dealing with comparative advertisement in the Trade Marks Act 1994 is Section 10(6) which stated that (6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.

But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
7

Meade,R.(2002) Comparative advertising in UK-The new law in its infancy. In : Barendt,E. et. al.(Ed.) The Yearbook of Media and Entertainment Law 1997/8. New York : Oxford University Press, p.247.

Section 10(6) operates as a defence by allowing the use by a person of a registered trade mark belonging to others (the trade marks proprietor or licensee) for the purpose of identifying the goods or services as belonging to the said trade marks proprietor or licensee. In other word, importing a reference is now allowed provided that such use must be in accordance with honest practice in industrial and commercial matters.

REFERENCES UK Trade Marks Act 1905 UK Trade Marks Act 1938 UK Trade Marks Act 1994 Malaysian Trade Marks Act 1976 Yeshin, T.(2006) Advertising. London : Thomson Learning,p.7 Isaac,B.(2000) Brand Protection Matters. London : Sweet & Maxwell, p.193

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White, T.A.B. et. Al.(1986) Kerlys Law of Trade Marks and Trade Names. London : Sweet & Maxwell,p.277. Meade,R.(2002) Comparative advertising in UK-The new law in its infancy. In : Barendt,E. et. al. (Ed.) The Yearbook of Media and Entertainment Law 1997/8. New York : Oxford University Press, p.247.

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