Emaco Ltd v Dyson Appliances Ltd

Date

26 January 1999

Legislation

Trade Marks Act 1994, s10(6)

Keywords

malicious falsehood; comparative advertising; honest practices

Counsel

Patrick Milmo QC, Iain Purvis, Peter Prescott QC, Daniel Alexander

Solicitors:

Bristows; Herbert Smith

Judge:

Jonathan Parker, J.

Court:

High Court (Chancery Division)

Reported:

[1999] ETMR 903

Summary:

Both parties complained of that the other had published false comparisons between their respective products (vacuum cleaners) in their advertising material. On the facts, both advertisements were shown to be materially false and misleading.

However, liability requires in addition malice (ie knowledge or recklessness as to the truth of the statement) and proof of damage (for which proof that the material was calculated to cause pecuniary damage will suffice). No malice on the part of either side's employees or agents was found, despite some instances of carelessness and confusion.

They also each complained of infringement of their trade marks, for which it was necessary to show that the use fell outside the 'honest practices' defence in section 10(6) of the Trade Marks Act 1994: the test being would a reasonable reader be likely to say, upon being given the full facts, that the advertisement is not honest? (Vodafone v Orange [1997] FSR 34).

Decision:

It followed from the findings of falsity above that the advertisements were not honest.

Nonetheless, no injunction would be awarded, as the representations had been overtaken by developments in both side's technology.