Comparative advertising with third-party trade marks?

Is a competitor entitled to use a competitor's trade mark in the context of an internet sales offer as part of comparative advertising in order to draw the attention of potential customers using a search engine to its own product, or does this constitute unfair exploitation of reputation and a trade mark infringement? The Federal Court of Justice (BGH) has now answered this legal question.

The manufacturer of the vacuum cleaner bags, which are distributed under the trade mark "Swirl", took action against a competitor who advertised its competing products on the internet as follows, with reference to the functional comparability of its products with those of the Swirl manufacturer:

"4 fleece for AEG alternative (similar to Swirl PH 86)"

and

"20 paper – for Miele alternative (similar to JFM similar to Swirl M 50 (M 50) & M 51 (M 51))"

The trade mark owner regarded the use of its trade mark as a violation of its trade mark rights and an anti-competitive unfair exploitation of reputation and issued a cease-and-desist letter against the competitor, for which a fee was charged.

The competitor restricted the enforced undertaking to cease and desist. He was of the opinion that he was permitted to continue to use the descriptive statement "similar to SWIRL", provided that the qualitative equivalence of the vacuum cleaner bags existed and the products were designated by his own trade marks.

Decision of the Court

The Federal Court of Justice (BGH) decided byjudgment of 02.04.2015 – Az. I ZR 167/13 – that the comparative advertising by the competitor was not objectionable from the perspective of trade mark law and competition law.

It does not, by itself, constitute an unfair exploitation of reputation if a third-party trade mark is used in an internet sales offer in the context of comparative advertising in order to draw customers using a search engine to its own product. Comparative advertising is generally permitted. An unfair practice in the sense of unfair exploitation of reputation is only justified if, in addition to the mention of the mark, further circumstances are present. This was not the case here, as the vacuum cleaner bags were functionally equivalent.

Likewise, there is no likelihood of confusion between the Swirl manufacturer and the advertising competitor or between the goods or services offered by them or the marks used, since the use of the adjective "similar" clearly indicates to the public that these are vacuum cleaner bags of the competitor.

Conclusion

A reference to the functional comparability of its products by mentioning a competitor's trade mark is possible within narrow limits, provided that reference is made to the intended purpose of one's own product and that one's own products are clearly marketed under one's own trade mark.