Barclays Bank Plc v RBS Advanta

Date

26 January 1996

Legislation

Trade Marks Act 1994 ss4, 10, 11

Keywords

Proviso under s10(6) Trade Marks Act; comparative advertising; honest practices in commercial matters

Counsel

David Young QC, Michael Silverleaf

Solicitors

Lovell White Durrant; Stevenson Harwood

Judge

Laddie J

Court

High Court (Chancery Division)

Reported

[1997] ETMR 199, [1996] RPC 307

Summary

In an action seeking interim relief, Barclays Bank, the registered proprietor of the trademark BARCLAYCARD complained about the use of that mark in certain passages of RBS Advanta's literature, intended to support and advertise a new credit card offered by RBS Advanta. Barclay's mark had, among other things, been used in an interest rate comparison table.

Barclays Bank contended that the literature, composed of a leaflet and brochure, would be read together, and use of the trademark amounted to TM infringement. The case centred on whether such use fell within the defence to trademark infringement contained within s.10(6).

Decision

It was held that the primary objective of s.10(6) was to allow comparative advertising, and that the proviso in s.10(6) should not be construed as effectively prohibiting comparative advertising. The test whether use of the trademark was in accordance with honest practises was objective, would the use be considered honest by members of a reasonable audience of the advertisements? Mere trade puffery, and hyperbole in advertisements would not constitute trademark infringement, but use of the mark would not be honest if the advertisement was significantly misleading. Statutory or industry codes of conduct were of little direct relevance in deciding whether use of the mark fell within honest practices or not.

The use, had to take advantage of the trademark it or be detrimental to it, above a de minimis level. It was likely that an advert that made use of a registered TM would almost always take unfair advantage of it and vice versa.

Laddie J. found that any reasonable reader would take the view that RBS's adverts were honest, Barclays Bank would obtain trivial benefit from the grant of an injunction and would suffer limited damage as a result of their competitor's advertising. As a result, the grant of an interim injunction was denied.