The Supreme Court has granted Aldi, a supermarket operator, leave to appeal a decision of the Court of Appeal which found in favour of Dunnes Stores, one of Ireland’s most established supermarket chains.  The Supreme Court accepted the case on the basis that establishing the scope of comparative advertising permitted between competing retailers is a matter of general public importance. 

Background 

Dunnes Stores ran an advertising campaign in 2013 in which shelf-edge labels compared the price of a number of Dunnes Stores products with those of similar products sold by Aldi.

Aldi issued proceedings on foot of this campaign, alleging that use by Dunnes Stores of Aldi trade marks was unauthorised and constituted trade mark infringement.  Dunnes Stores contended that it was entitled to use the Aldi trade marks as it was engaged in lawful comparative advertising under the Comparative Advertising Directive (Directive 2006/114/EC) and the Irish implementing regulations (the Regulations).  In the High Court, Mr Justice Cregan ruled in Aldi’s favour concluding that Dunnes had infringed Aldi’s trade marks and that Aldi was entitled to an injunction to prevent future infringement. 

As we previously reported here, the Court of Appeal overturned the decision of the High Court on the grounds that:

• a comparison confined to price alone was in fact legitimate; and
• a comparison of products that meet the same needs is permissible under the Regulations. 

Application for Leave to Appeal

Aldi sought to appeal the decision of the Court of Appeal to the Supreme Court on the basis that the case:

• concerned a matter of general public importance; and
• that the interests of justice would be served by permitting an appeal. 

Aldi argued that the correct interpretation of the law in this area is important as it may impact future disputes relating to the use of a competitor’s trade marks in the course of advertising.  Aldi also claimed that the Court of Appeal placed too much emphasis on comparative advertising rules when the case was, in essence, “always about trade mark infringement”. 

Determination 

The Supreme Court was persuaded that this case involves an issue of general public importance and, as such, satisfied the constitutional criteria for leave to appeal.  The determinative factor was whether the issues likely to arise on appeal would be of some significance beyond the facts of the case i.e. could they have a broader application for retailers generally?  In finding that they could, the Supreme Court took the view that, while the broad principles may already be clear in this area, the approach to implementing those principles may not be. To that end, it decided that the law would benefit from Supreme Court clarification.

Comment

The Court of Appeal decision was viewed as affording a relatively broad degree of freedom to advertisers to run comparative advertising campaigns, however, the parameters of this freedom were not fully delineated by the Court of Appeal. This has left retailers unsure as to whether or not they run the risk of infringing competitor trade marks when comparing prices. Accordingly, a Supreme Court decision on the precise boundaries of what is permitted should provide some much needed clarity in this area of law. 

Contributed by: Brian McElligott

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