ReactS : Advertising Lawyers & Attorneys : Reed Smith Law Firm : Marketing Regulations, Product Placement

Google’s new trademark policy comes into play from the 14th September 2010 in UK, Ireland and Canada, and effectively most of Europe. The change has been received with differing views. One view is that it will ultimately result in a better surfing experience for users; the other is that it is nothing other than a ruse for Google to hike up prices and cut costs. Whatever your view brands need to be aware of what, if any, rights they have left to protect their brands on line in sponsored search results on Google.

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At the end of July, Intercontinental Brands ("ICB") lost their appeal against the High Court ruling that their "VODKAT" brand was being passed off as genuine vodka. In an important case, which will have an effect on advertisers' choices for product names, the court held that makers of vodka, such as Diageo, were entitled to protect the 'vodka' name under the doctrine of "extended passing off".

Five elements have to be established in order to succeed in a claim for extended passing off:

1. That his business consists of, or includes selling in England a class of goods to which the particular trade name applies;
2. The class of goods is clearly defined, and that in the minds of the public, or section of the public, the trade name distinguishes that class from other similar goods;
3. Due to the established reputation of the goods there is goodwill attached to name;
4. The claimant is the owner of the goodwill which is of substantial value;
5. The claimant has suffered, or is likely to suffer substantial damage to his goodwill.

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Last week the Chancery Division dealt a blow to Specsavers when judgment was given in its trade mark infringement claim against Asda. Keen-eyed observers will also see that Specsavers were represented by the aptly named Adrian Speck.

Asda ran an in-store advertising campaign for its optician's services which featured a logo containing two ovals along with the straplines "Be a real spec saver at Asda" and "Spec savings at Asda". Specsavers, whose own logo consists of two interlocking ovals framing the word 'Specsavers', brought claims for trade mark infringement on the basis that the use of the logo and the straplines caused confusion, and took unfair advantage of their registered marks. They also claimed passing off. (The logos can be seen in the appendices to the judgment which can be found here.)

The court ruled against Specsavers on all but one of its claims. It was a clean sweep for Asda on likelihood of confusion (or the lack of it), which can be a difficult claim to run in comparative advertising cases: in order to draw an effective comparison, it must be possible for consumers to distinguish between the two traders in question, and so comparative campaigns are generally designed to avoid confusion. Specsavers did have some success on the 'unfair advantage' claims, as the court held that Asda's use of the "Be a real spec saver at Asda" strapline took unfair advantage of the SPECSAVERS trade mark. The use of the words 'spec saver' was a clear link to the SPECSAVERS mark, and by using it Asda were taking unfair advantage of Specsavers' established reputation. There was, however, no unfair advantage in Asda's use of the ovals logo (which was held to have only a weak resonance with the Specsavers logo) or the "Spec savings at Asda" strapline.

There was an obvious intention on Asda's part to incorporate a reference to Specsavers into their campaign and the court seemed to accept that it was 'living dangerously'. Intention is generally irrelevant in trade mark infringement claims (except perhaps where it comes into the 'honest practices' test applying to some of the defences), but here the court conceded that if there is evidence showing a defendant is 'living dangerously', that would be admissible but not conclusive in relation to the question of actual confusion. In this case the 'living dangerously' evidence did not affect the result on confusion, but it did appear to make the court more amenable to a finding that there was a link between the logo used by Asda and the Specsavers logo. The court's approach appears to suggest that advertisers who deliberately sail close to the line could find themselves in more trouble, but anyone who mounts a comparative advertising campaign will surely be 'living dangerously' in the same way that Asda was. Comparative campaigns will always involve a deliberate attempt to incorporate a reference to another trader. The trick is to live dangerously by sailing close to the line without crossing it, so it is important to obtain good compliance advice.

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The first television commercial for post conception advice by Maris Stopes led to the Advertising Standards Authority receiving almost 5,000 complaints, fueled by attacks from anti-abortion groups. Apparently the ASA also received a petition against the advertisement from the Society for the Protection of Unborn Children.

Despite the fierce objections however the ASA did not uphold the complaints, indeed it may well be argued that no other outcome was feasible since the advertisement did not breach any of the Code rules, as we stated in our blog of 24 May 2010 . The ASA concluded that the advertisement would not cause widespread offence and was not harmful in that it would not encourage promiscuity or overly appeal to young people.

It is interesting nevertheless to consider the grounds that were used by complainants to object to the advertisement.  Arguments against the commercials were wide ranging and included: that the commercial was a political message; the ad promoted abortion; offended the religious beliefs of some viewers; trivialised the decision to choose abortion; did not take into account the views of the father; was sexist in that it portrayed pregnancy as a woman's responsibility; and that it would encourage promiscuity among young people and that it equated decisions about the life of an unborn child with decisions about consumer goods.

None of these views were accepted and the ASA adjudication states:

We considered that it was clear that the ad was promoting the Advice Line as a source of information for ..women, and noted that it did not advocate one option over another.

Unsurprisingly anti-abortion groups are upset at the decision, with the ProLife Alliance claiming the ASA has ignored clear breaches of the Code.  The commercials were though carefully and sensitively produced and there is little doubt the advertisements are compliant with the BCAP Code.  As I commented in May this year in Campaign Magazine, given this is a highly sensitive area, there will always be those who object to the right to advertise such services.   

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Ofcom has today designated that, from 1 September 2010, the Advertising Standards Authority (ASA) will be the appropriate regulator for advertising on video on demand (VOD) services notified to the Association for Television on Demand (ATVOD), thus maintaining the ASA as the one stop shop for advertising regulation and enforcement in the UK.

Simultaneously, CAP has issued a new Appendix to the CAP Code (the Code), incorporating new rules into the Code, which will take effect from the same date. This change does not introduce new rules for VOD advertising: it is merely necessary to ensure that the Code reflects specific legislative rules that apply to VOD services, which are not already covered in the Code, thereby enabling the ASA to regulate this area.

In addition to the new Appendix, advertising on VOD services must continue to comply with all the rules and provisions of the Code. In effect, therefore, for advertisers little has changed, except that the regulatory enforcer is now the ASA, with Ofcom merely acting as a backstop power. VOD providers should remember, however, that, under the Communications Act 2003 (the Act), they are primarily responsible for complying with the rules contained in the Act, which are now set out in the Appendix.

In addition to the usual remit of sanctions for non-compliance, the ASA also has the power now to refer any matter to Ofcom with a view to Ofcom considering whether the media service provider has contravened the requirements of the Act.

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Ofcom recently investigated 57 programmes broadcast on STV in 2008 and 2009, all of which were sponsored either by the Scottish Government or its agencies. This followed allegations in the press that the Scottish Government had influenced the content of STV's programming.

39 of the programmes in question (including the 12 Homecoming programmes, about which the press had originally complained) were found not to be in breach of sponsorship rules in the Broadcasting Code. However, 18 other programmes, most of them short, one-minute productions on public information subjects, were deemed to be in breach.

Ofcom reiterated in the adjudication that a sponsor is only allowed to gain promotional benefit from funding through being associated with the programme, not by being referred to during it. There must be no promotional reference to the sponsor in the programme and the relationship between the sponsor and the sponsored programme must be transparent.

Ofcom felt that in this case STV had sought programme funding to create programmes which were effectively vehicles for the promotion of their interests. Although the majority of the series found to be in breach of the Code covered "social action subjects", such as education, health and well being, which are intrinsically unownable, non-proprietorial matters, Ofcom nevertheless felt that the series in fact promoted the service or product provided by the sponsors. For example, the programme, Time for Change, sponsored by Learning Direct Scotland, focused purely on the benefits of attending courses and the funding that was available. Ofcom inevitably surmised that this series served almost solely as a vehicle to encourage viewers to use the service of Learn Direct Scotland, a body which (surprise, surprise) advises consumers on suitable courses and available funding!

Ofcom felt that in these 18 culpable cases, the programmes were in effect advertisements for the sponsor or its activities. STV's sponsors were not simply associated with their respective programmes; they were promoted by them. This time the Scots certainly did not get off scot-free...

Written by Helena Heaton, summer vacation student.

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