Yesterday, German supermarket chain Aldi secured an injunction against its Irish competitor, Dunne’s Stores in respect of the infringement of its pan EU (CTM) trade marks. The injunction was granted by the High Court of Ireland and restrained Dunne’s Stores from infringing Aldi’s CTMs.
Aldi had applied for injunctive relief following an earlier decision from the High Court that Dunne’s Stores had engaged in misleading commercial practices when it compared Aldi’s prices of a number of products during an advertising campaign in 2013. The Court found that 14 out of 15 pricing labels Dunnes had applied to its products had included false information about their nature, composition and ingredients. The slogans displayed on the price comparison labels stated “lower price guarantee” and “guaranteed lower prices on all your family essentials” and “Aldi Match”. The Court held that “such information would be likely to cause the average consumer to make a transactional purchase decision which that consumer would not otherwise make”. Dunne Stores is currently appealing the earlier ruling and had argued that no injunction should be granted pending the appeal.
While comparative advertising is permissible under domestic Irish trade mark law and EU law, it is ostensibly governed by the EU Directive on Comparative Advertising (EC) 97/55 to which Ireland is bound. Section 14(6) of the Irish Trade Marks Act, 1996 allows comparative advertising subject to the proviso that it must be conducted in accordance with honest practices in industrial and commercial matters and should not, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputation of the trade mark.
Notwithstanding the provisions under the Trade Marks Act, 1996, the High Court would have been bound by the provisions of the EU Directive and related case law from the EU Court of Justice. In its ruling Lidl Belgium GmbH v Establissementen Franz Colruyt NV, (2007), the European Court of Justice ruled that comparative advertising claiming that the advertiser’s general price is lower, where the comparison relates to a sample of products, may be misleading for a number of reasons, including if the advertisement does not reveal the comparison related only to such a sample and not to all the advertiser’s products. It would appear that the pricing labels Dunnes used fell within the same category, which therefore gave rise to a finding of trade mark infringement.
In summary, the law in Ireland relating to comparative advertising is that it is lawful if such advertising is necessary to inform consumers of the nature of the respective products or intended purposes of the services offered. No breach will be found if the use of a third party’s trade mark is necessary to indicate the intended purpose of a product if that is the only way of providing the public with information as to the possible uses of the products in question.