Gibraltar (UK) Ltd v Viovet Ltd
| Jurisdiction | England & Wales |
| Judge | James Pickering |
| Judgment Date | 09 April 2024 |
| Neutral Citation | [2024] EWHC 777 (Ch) |
| Year | 2024 |
| Court | Chancery Division |
| Docket Number | Claim No. IL-2022-000095 |
[2024] EWHC 777 (Ch)
James Pickering KC
(sitting as a Deputy High Court Judge)
Claim No. IL-2022-000095
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
BETWEEN:
Georgina Messenger (instructed by HGF Law LLP) for the Claimants
Maxwell Keay (instructed by DWF Law LLP) for the Defendant
Hearing date: 5 December 2023
APPROVED JUDGMENT
James Pickering KC (sitting as a Deputy High Court Judge):
PART I: INTRODUCTION
PART II: THE BACKGROUND
PART III: THE LAW
PART IV: DISCUSSION
PART V: CONCLUSION
PART I: INTRODUCTION
Comparative advertising arises where an advertisement identifies not only the advertiser's own product but also (either explicitly or by implication) a competitor or a product offered by a competitor. The extent to which comparative advertising should be permitted involves balancing different policy considerations: on the one hand, fair competition is to be encouraged; on the other, intellectual property rights ought to be respected. How that balance is to be achieved is currently found in a number of regulations and directives as described in more detail below. At present, however, there is relatively little case law or other guidance on the topic.
The present dispute involves veterinary nutraceuticals. Veterinary nutraceuticals are substances which are produced in a purified or extracted form – generally comprising a broad group of natural compounds and/or microbes — with the aim of maintaining or improving the health and well-being of animals. They are not pharmaceuticals and, unlike pharmaceuticals, a prescription is not required to buy them. They are big business.
In any event, the matter now before me is the trial of a preliminary issue within a claim for trade mark infringement based on an alleged contravention of the regulations relating to comparative advertising in the context of such veterinary nutraceuticals.
PART II: THE BACKGROUND
The parties
The First Claimant, Gibraltar (UK) Ltd (“ GUK”), is the registered proprietor of various trade marks, including word marks for SYNOQUIN, AKTIVAIT, FIBOR, COATEX, and CYSTAID. Each of the above marks is the brand name of a particular veterinary nutraceutical product.
The Second Claimant, Vet Plus Ltd (“ VetPlus”), is the authorised supplier of each of the above products (together, “ the VetPlus Products”). VetPlus sells the VetPlus Products to veterinary practices via veterinary wholesalers. The veterinary practices then on-sell the VetPlus Products to customers (i.e. pet owners), usually following a consultation and a veterinary recommendation. According to VetPlus, its products have a reputation in the UK veterinary market as being high quality and efficacious. Indeed, the efficacy of some of the VetPlus Products has been backed up with clinical testing – a fact that is communicated to veterinarians.
The Defendant, Viovet Ltd (“ Viovet”), is a company which, through its website at www.viovet.co.uk, retails its own brand veterinary nutraceutical products. Importantly, however, through the above website it also retails third party veterinary nutraceutical products, including the VetPlus Products. In short, therefore, a customer visiting Viovet's website may buy either Viovet's own brand products or, alternatively, third party products such as the VetPlus Products.
The advertisements
Between August 2021 and June 2022, Viovet ran a series of advertising campaigns on its website that offered the VetPlus Products for sale. For present purposes, the relevant advertisements fall into 3 categories.
(a) The Annex A advertisements
The Annex A advertisements (so-called because an example appears at Annex A of the Claimant's Amended Particulars of Claim) offered for sale each of the VetPlus Products.
When a customer selected one of the VetPlus Products, they were presented with an option of clicking either an orange button with the text “ Add to Basket” (which, if clicked, would — subject to the Annex B advertisement below — enable the customer to buy the VetPlus Product in question) or, alternatively, a red button containing a reversible arrows symbol and text stating either “ Save £[x] per day” or “ Swap and Save [£]” or “ Try something new” (which, if clicked, would take the customer to one of Viovet's own brand products).
(b) The Annex B advertisements
Following on from the above, if a customer clicked the orange “ Add to Basket” button with a view to adding one of the VetPlus Products to their basket, they were then presented with a further pop-up which displayed not only the selected VetPlus Product but also one of Viovet's own brand products – as set out in Annex B to the Amended Particulars of Claim.
Beneath each product was its price (and its price per day) with Viovet's own brand product being cheaper in each case. In between the two products was a reversible arrows symbol and at the foot of the page the customer was presented with an option of clicking either an orange button with the text “ Swap and Save” (which, if clicked, would take the customer to the Viovet own brand product) or, alternatively, a white button with the text “ No Thanks” (which, if clicked, would enable the customer to buy the originally selected VetPlus Product).
(c) The Annex C advertisement
The Annex C advertisement related just to one of the VetPlus Products – Aktivait.
On the webpage on which Aktivait was offered for sale, the customer was presented with a button stating “ Read More”. On clicking this, the customer was taken to an advertisement of one of Viovet's own brand products – “RenewMe”. That webpage stated that it “ contains trusted ingredients found in Aktivait” and was a “ more cost-effective option”.
The present claim
On 6 October 2022, GUK and VetPlus issued the present claim by way of a Claim Form and Particulars of Claim. In broad terms, it was alleged that by referring to the VetPlus Products in the above advertisements, Viovet had used the trade marks for the purposes of comparative advertising in a way which contravened the relevant regulations and therefore amounted to trade mark infringement.
On 22 November 2022, Viovet filed and served a Defence in which, in broad terms, it denied that any such contravention of the regulations (and therefore any infringement of the trade marks) had taken place.
On 21 April 2023, GUK and VetPlus filed and served an Amended Particulars of Claim following which, on 12 May 2023, Viovet filed and served an Amended Defence.
On 22 May 2023, the matter came before Master Kaye for a case management conference. At that hearing, and in accordance with a proposal put forward by the parties, she made an order that the following issue should be tried as a preliminary issue:
“What message is conveyed by the comparative advertising complained of? In particular:
(a) Would the average consumer when presented with the Disputed Representations regard them as statements that the Defendant's products are comparable in nature and/or composition and/or specification to the Second Claimant's products including, inter alia, the efficacy and quality of the products?
[as contended for by the Claimants]
(b) Would the comparative advertising at Annexes A and B to the Particulars of Claim be understood as only making a comparison concerning price and not making any comparisons concerning the nature, composition, specification or efficacy of the Defendant's and Second Claimant's products? Would the comparative advertising at Annex C to the Particulars of Claim be understood as making a comparison concerning price and also as stating that the Defendant's RenewMe product contains some of the ingredients that are found in the Second Defendant's Aktivait product?
[as contended for by the Defendant]”
It is the trial of the above preliminary issue which is the matter now before me.
PART III: THE LAW
Article 9(3)(f) of the EU Trade Mark Regulation (EU) 2017/1001 (“ EUTMR”) provides that trade mark infringement may arise where a trade mark is used “…in comparative advertising in a manner that is contrary to Directive 2006/114/EC”.
Article 4 of Directive 2006/114/EC — more commonly known as the Comparative Advertising Directive (“ CAD”) — sets out the conditions for permitted comparative advertising. Importantly, the CAD has been substantially implemented in the UK by the Business Protection from Misleading Marketing Regulations 2008 (“ the 2008 Regulations”) 1.
Regulation 2(1) of the 2008 Regulations provides that:
“In these Regulations…
“advertising” means any form of representation which is made in connection with a trade, business, craft or profession in order to promote the supply or transfer of a product…
“comparative advertising” means advertising which in any way, either explicitly or by implication, identifies a competitor or a product offered by a competitor…”
Further, regulation 4 of the 2008 Regulations provides:
“Comparative advertising shall, as far as the comparison is concerned, be permitted only when the following conditions are met:
(a) it is not misleading under regulation 3;
(b) it is not a misleading action under regulation 5 of the Consumer Protection from Unfair Trading Regulations 2008(1) or a misleading omission under regulation 6 of those Regulations;
(c) it compares products meeting the same needs or intended for the same purpose;
(d) it objectively compares one or more material, relevant, verifiable and representative features of those products, which may include price;
(e) it does not create confusion among traders—
(i) between the advertiser and a competitor, or
(ii) between the trade marks, trade names, other distinguishing marks or products of...
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