COMPARATIVE ADVERTISING : FIRE : INFRINGEMENT : INSULATION : MISREPRESENTATION : TRADE MARKS : PROMOTIONAL CAMPAIGN DEMONSTRATING RELATIVE FIRE SAFETY OF TWO PRODUCTS : CAMPAIGN CONTAINING MISLEADING AND FALSE REPRESENTATIONS : DIRECTIVE 2006/114 ON MISLEADING AND COMPARATIVE ADVERTISING 2006 : art.4 DIRECTIVE 2006/114 ON MISLEADING AND COMPARATIVE ADVERTISING 2006
The court found that a promotional campaign, which purported to demonstrate the comparative fire resistance of a manufacturer’s insulation products and those of a competitor, contained false and misleading representation and infringed the competitor’s trade marks.
The claimant (K) brought an action for trade mark infringement and malicious falsehood against the defendant (R). The dispute concerned insulation panels for use in ceilings and walls. There were two types of panel: those made with plastic foam, which was combustible, and those made with mineral wool, which was not. K manufactured panels with a plastic foam core. R produced a mineral wool for use in its own and others’ panels. The argument centred on a promotional campaign conducted by R. R had subjected some of its own and K’s products to the ISO 9705 “reaction to fire” test. It claimed that the results showed that panels made with incombustible materials were substantially more fire resistant than those made with combustible materials. It demonstrated those results in its campaign by setting fire to model rooms clad with K’s panels, to show how quickly they caught fire. K’s case was that the campaign made false and misleading representations to the effect that three of its products were a fire hazard and were unsafe. It alleged that R had thereby infringed its registered trade marks and was liable for malicious falsehood.
HELD: (1) K’s trademarks had been infringed. R had falsely represented that its tests evaluated the performance of K’s products in a real fire and illustrated the risks of installing K’s products in buildings. It had falsely represented that its tests were appropriate and provided a fair comparison from which conclusions might properly be drawn as to relative fire dangers of its own and K’s products when properly installed and used for their intended purpose. It had falsely represented that ISO 9705 was an appropriate test for evaluating the contribution to fire growth made by K’s products and, in relation to some of K’s products, it had falsely represented that the tests had been conducted in accordance with the method required by ISO 9705. Most importantly, it had represented that K’s products were dangerous when properly installed and used for their intended purpose. Its demonstrations were based on the premise that K marketed its products as “fire safe” and that R had subjected them to tests that evaluated their performance in a real fire situation so that the results could be categorised into a schedule of performance representing the integrity of each product in its designed usage. In fact, K marketed only one of the products in question as “fire safe”, and the tests did not do what R claimed. R had installed K’s products on the internal surfaces of the model rooms when they were designed exclusively for external use. The tests could not therefore provide any basis for evaluating the relative dangers of the products when properly installed and used for their intended purpose. The demonstrations were not representative of real situations and gave the misleading impression that that was how K’s products would perform in a real fire when properly installed. They represented, contrary to the facts, that K’s products were dangerous (see paras 75, 80-81, 86, 88, 90, 102, 105, 107, 114, 116, 128-131, 91-192, 204, 206, 208, 210-211 of judgment). R’s activities could not be said to constitute legitimate comparative advertisements for the purpose of Directive 2006/114. The conditions in art.4 of the Directive were cumulative and their purpose was to achieve a balance between the different interests that might be affected by comparative advertising. The aim was to stimulate competition to the consumer’s advantage by allowing competitors to highlight objectively the merits of comparable products while, at the same time, prohibiting practices that might distort competition, be detrimental to competitors or have an adverse effect on consumer choice. The conditions had to be interpreted in the sense most favourable to permitting advertisements that objectively compared the characteristics of goods or services, while ensuring that comparative advertising was not used anti-competitively and unfairly, or in a manner that affected customer interests. The lawfulness of comparative advertising was to be assessed solely by reference to the criteria laid down in the European legislation and it was for the national court to ascertain, in the circumstances of each case and bearing in mind the consumers to which the advertising was addressed, whether it might be misleading. That court had to take into account the perception of the average, reasonably well informed, reasonably observant and circumspect consumer of the products or services being advertised, Lidl SNC v Vierzon Distribution SA (C-159/09) (2011) ETMR 6 ECJ (4th Chamber) and L’Oreal SA v Bellure NV (C-487/07) (2010) Bus LR 303 ECJ (1st Chamber) followed. R’s material was misleading and failed objectively to compare material, verifiable and representative features of the products (paras 221, 227-236). (2) The claim for malicious falsehood failed. R had neither known that the material complained of was misleading, nor had it been indifferent to whether or not it was misleading (paras 237-245).
Judgment for claimant in part
 EWHC 250 (Ch)
(1) KINGSPAN GROUP PLC (2) KINGSPAN HOLDINGS (IRL) LTD v ROCKWOOL LTS : ROCKWOOL LTD v KINGSPAN GROUP PLC (2011)
Ch D (Kitchin J) 21/2/2011