One of the most effective ways to advertise is to compare your goods and services to those of your competitors. This form of comparative advertising eliminates the guesswork which must be done by the potential consumer by providing evidence of the superiority of a good or service. While this may seem harmless, there are legal constraints to comparative advertising and more specifically the use of a competitor’s trademark.

Comparative advertising is the advertising of ones goods or services by comparing them to a competitor’s. Such comparison may be direct, often involves the use of the competitor’s trade mark and possibly leads to the infringement of that mark. The Trade Marks Act provides that a mark is infringed when a similar or identical mark is used in the trade of identical goods and services or where the use of similar marks is likely to deceive or confuse the public. The rights in a mark can also be infringed when unfair advantage is taken of the reputation in that mark.

However, the Trade Marks Act does not prevent the use of a registered trade mark by a person as a means of identifying the goods of the proprietor of a mark where such use is “…in accordance with honest practices in industrial or commercial matters” and does not “…take unfair advantage of, or is detrimental to the distinctive character of the reputation of the trade mark”. This seemingly allows comparative advertising but within very strict guidelines as not only must the assertion about the product be honest (and therefore true) but it must not be detrimental to the mark. Overall, there is a duty to act fairly in the interest of the proprietor.

Whether an advertisement is “honest” will be construed through the eyes of the reasonable consumer. The question to be asked is whether a reasonable consumer knowing all the facts, considers the advertisement to be honest. The average consumer expects the use of hyperbole or exaggeration, but such excessiveness must be done with the interest of the competitor’s reputation in mind.

The UK courts (in applying a similar provision under their Trade Marks Act) found that an advertisement stipulating that a particular type of razor blade was compatible with different brands of razors was compliant primarily because the mention of the competitor’s brand was necessary to indicate the intended purpose of the product being marketed and the use of that mark was the only way to communicate the complete information to the customer. In one instance a cellular phone company advertised the possible savings for customers of its competitors if these customers switched to its network. The advertisement specified the competitor’s name. However, the court found that the statement was true and not misleading.

While comparative advertising is possible, advertisers must be cognisant of the restrictions on advertising under both the Fair Competition Act and the Consumer Protection Act. For instance, under the Fair Competition Act, it is an offence “to make a representation to the public that is false or misleading or is likely to be misleading in a material respect.” It is also an offence to falsely represent the “particular kind, standard, quality or quantity” of a service being provided by a particular person. This offence is committed whether the communication is made directly or indirectly. The Consumer Protection Act provides a more detailed protection by prohibiting misleading representations (inclusive of advertisements) which are deceptive or tend to mislead the public as to the nature of the good or service.

Most Jamaican advertisers are cautious about using their competitors’ brands or even names. Therefore, advertisers allude to the competition by using a similar colour scheme or using a word that is similar but not identical to the competitor’s. While this may be in compliance with the Trade Marks Act, advertisers should still be cautious since a mark may include more than a logo or a name. Business owners now seek to register their get-up and other indicia of their trade as trademarks.

So if you feel you must compare in order to get your message across, why not proceed. Be careful, however, not to infringe the intellectual property rights of your competitors.

Grace A Lindo is an Associate in the Commercial and Intellectual Property Departments at Myers, Fletcher & Gordon. She may be contacted at grace.lindo@mfg.com.jm or via www.myersfletcher.com.