Litigation Litigator's View

"Knocking copy" has long been a legitimate tool of the UK advertising industry, but has in the past led to legal wrangles over the use of a competitor's trade mark.

When the Trade Marks Act 1994 was introduced the reference to another's trade mark became acceptable as long as it was used in accordance with "honest practices in industrial or commercial matters". But the Act failed to clarify what "honest practices" meant.

That is why the legal profession and the advertising industry will welcome the recent judgment in the case of Barclays Bank and RBS Advanta (a joint venture between Royal Bank of Scotland and Advanta Corporation). RBS Advanta was sued by Barclays Bank for using the word "Barclaycard" (a registered trade mark) in advertising literature for a new Visa credit card. Judgment was given refusing Barclays an injunction pending full trial.

The judgment was particularly clear and helpful and laid down some useful guidance as to honest practices. The test is objective, so if the use of the mark is considered honest by members of a reasonable audience it will not infringe.

The guide said: trade puffery (including poking fun at a rival's goods and services) would not take advertising outside "honest practices"; the advertisement should not be significantly misleading; there is no duty to draw attention to the merits of the rival's goods and services; the nature of the product may affect what is seen as being honest, for example, the good reputation of medicines and the public's poor view of second-hand cars; and compliance with voluntary or statutory codes of practice do not necessarily govern the matter.

By the nature of advertising it is impossible to be sure whether or not use of another's mark infringes. But what is now apparent is that comparative advertising has been cleared as legitimate. Although only an interlocutory decision capable of reverse at trial or on appeal, it remains the decision of a respected specialist in trade mark matters.

Clive Thorne is a partner at Denton Hall.