The most important intellectual property (IP) rights applicable to advertising are passing off, trade marks, and copyright.

Passing off
Advertisers should be careful not to ‘pass off’ a client’s goods or services as those of their client’s competitors. This may occur if an advert misrepresents the client’s goods or services as those of a competitor in such a way that it may confuse that competitor’s actual or potential customers or tarnish the reputation of the competitor’s products.

Passing off may also occur if a celebrity is used in such a way that it may imply the celebrity has endorsed the advertised product. If a celebrity appears in the advert, his or her prior written permission for such appearance should always be obtained.

Trade marks
An advertiser may risk infringing another’s trade mark during the course of producing an advert. A trade mark is an exclusive right to use a sign which indicates where the goods or services being sold have originated. If another person uses this trade mark to promote his goods or services, he will infringe the trade mark proprietor’s rights.

Trade marks may be an issue of concern for advertisers who are trying to promote a product which is similar to that of a competitor’s. For example, in the UK, an advertisement for Coca-Cola claiming that a can of Coke contains less sugar than a can of Pepsi may be an infringement of Pepsi’s trade mark(s).

However, even if a third party trade mark is infringed, there is a defence if the advert complies with the requirements of the relevant comparative advertising legislation. These allow the use of another’s trade mark for comparative advertising, providing the advertisement:

  • is not ‘misleading’,
  • compares goods or services intended for the same purpose,
  • provides an objective comparison of at least one material, relevant, verifiable and representative feature of the goods or services,
  • does not denigrate the competitor’s goods or trade mark,
  • does not take unfair advantage of the reputation of the competitor’s trade mark,
  • does not present the newly advertised goods as imitations of the goods originally protected by the trade mark, and
  • does not create confusion in the market place between the advertiser and competitor or their goods, services or trade marks.

Practical Steps
Advertisers should check the Trade Marks Registry website to see if any applicable words/phrases/slogans/pictures used in the advertisement are already registered as trade marks. If a third party trade mark is being considered for use in an advert, advertisers should ensure that any proposed advert complies with the requirements set out above.

Unless varied by contract, the person who creates an advert or, if such person is an employee, his employer, will acquire copyright in the artistic and literary works that form the advert. Depending on the form the advert is to take, additional copyrights may arise in its creation such as copyright in a sounds recording and, if relevant, broadcast which may be owned by further individuals.

If an advertiser copies another’s work without permission, the owner of copyright in that other work may bring an action for copyright infringement and prevent use of their work in the advert.

Other issues
In addition to the issues relating to the IP rights set out above, all advertisers must ensure they comply with the Advertising Standards Agency’s codes of practice and any other rules and regulations applicable to the industry sector in question.

Content supplied by College of Law students at the Moorgate Centre supervised by Tim Harris of Bird & Bird LLP. Photo credit: Andy Welsh

Image: Jie Yang