SAMPLE ASSIGNMENT COMPARATIVE TRADEMARK LAW (UK)

“IMPORTING A 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 Kingdom’s 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

Kingdom’s Trade Mark Act 1938 (in particular, Section 4(1)(b) of the 1938 Act).The United

Kingdom’s 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

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far as registered trade marks are concerned with the introduction of the new United Kingdom’s

Trade 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 Irving’s 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 UK’s 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 one’s 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.

1 Yeshin, T.(2006) Advertising. London : Thomson Learning,p.7

2 Isaac,B.(2000) Brand Protection Matters. London : Sweet & Maxwell, p.1932

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

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 UK’s 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?

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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

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

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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……………………….

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 Irving’s 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

3 White, T.A.B. et. Al.(1986) Kerly’s Law of Trade Marks and Trade Names. London : Sweet & Maxwell,p.261.5

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 respondent’s preparations actually originated from the appellant but instead

the respondent had used the trade mark ‘Yeast-Vite’ to distinguish their (the respondent’s)

product (Yeast Tablets) from that of the appellant’s (Yeast-Vite) by stating that their product,

’Yeast Tablets’, was a substitute for the appellant’s 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 Irving’s 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

Irving’s 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

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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 it…in 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 -

(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

4 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’.

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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.

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

6 White, T.A.B. et. Al.(1986) Kerly’s Law of Trade Marks and Trade Names. London : Sweet & Maxwell,p.277.

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price comparisons table between their own proprietary medicine (under the trade mark

‘Bismuthated’ magnesia tablets) and the plaintiff’s ‘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 owner’s 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

plaintiff’s 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

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.

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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.

Section 10(6) operates as a defence by allowing the use by a person of a registered trade mark

belonging to others (the trade mark’s proprietor or licensee) for the purpose of identifying the

goods or services as belonging to the said trade mark’s 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.

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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

White, T.A.B. et. Al.(1986) Kerly’s 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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