The Irish High Court has issued a significant decision in Aldi Stores (Ireland) Limited & anor v- Dunnes Stores (No.2)  IEHC 551holding that a plaintiff is entitled as of right to an injunction where a trade mark is infringed in the course of a comparative advertising campaign even where the advertising campaign in question has ended. The defendant has indicated that it will be appealing the finding of liability made by the court.
In a decision on 9 June 2015, Mr Justice Cregan found that a comparative advertising campaign run by Dunnes Stores (Dunnes) had infringed Aldi’s trade marks and was in breach of the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 (the Comparative Advertising Regulations). On foot of this decision, Aldi sought an injunction restraining Dunnes from infringing their trade marks.
Aldi sought to rely on Article 102(1) of the Community Trade Mark Regulation 207/2009 (the CTM Regulation) which provides that "where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order preventing the defendant from proceeding with the acts which infringed or would infringe the Community trade mark". It was Aldi’s submission that the fact that Dunne’s campaign had ceased in August 2013 was not a ground on which the Court should refuse the injunction.
The court found in favour of Aldi holding that Article 102(1) required the Court to issue an injunction unless there were special reasons for not doing so.
In making this finding the court relied on the Court of Justice of the European Union (CJEU) decision in Nokia Corp v. Joacim Wardell  ECR I- 12083 (Nokia). In Nokia the CJEU emphasized that Article 98(1) of the Community Trade Mark Regulation 40/94 (the predecessor of Article 102)was drafted in mandatory terms and that the condition relating to ‘special reasons’ was an exception to this obligation which must be interpreted strictly. The term ‘special reasons’ required a uniform interpretation. To make the grant of a prohibition against further or threatened infringement conditional on an "obvious or not merely limited risk of recurrence of such acts" would result in varying degrees of protection of the Community trade mark (CTM) across different courts.
Relying on the text of Article 102(1) and the decision in Nokia, the court found that there was an obligation under the CTM Regulation to issue an injunction and the fact that Dunnes’ past conduct had ceased was not a defence to an application for an injunction absent special reasons.
Further basis for granting an Injunction
In addition to the plaintiff’s right to an injunction under the CTM Regulation, the court held that Aldi was entitled to an injunction under section 18(2) of the Trade Marks Act 1996. The court agreed with Aldi who submitted that it was sufficient for the granting of an injunction to show that an actual infringement has already occurred and that the claimant was not bound to wait until it is repeated.
The court also found that Aldi was entitled to an injunction under Regulation 5(1) of the Comparative Advertising Regulations as well as under section 71(2) Consumer Protection Act 2007.
Finally the court looked at the courts discretion to grant an injunction in the event that its’ legal assessment of Article 102(1) of the CTM Regulation, the Trade Marks Act, and the Comparative Advertising Regulations was incorrect. Based on a number of factors, the court found that it should exercise its discretion in favour of granting an injunction.
The court pointed to the fact that the unlawful comparative advertisements were part of a calculated and protracted nationwide campaign resulting in numerous infringements of the plaintiffs’ trade marks. Furthermore the fact that the campaign had finished was beside the point as the issue was the infringement of the plaintiffs’ trade marks.
This decision is likely to have ramifications for future comparative advertising campaigns run by the defendant and traders generally. In particular:
- While the court made it clear that its order would not preclude future comparative advertising campaigns (which could of course be conducted lawfully in accordance with the Comparative Advertising Regulations), it nonetheless will inevitably mean that the defendant will need to exercise an especially high degree of care when planning future comparative advertising campaigns that make use of the plaintiff’s trade mark.
- The court also showed a willingness to take the defendant’s behaviour into account. Mr Justice Cregan expressed his concern that were the court not to grant an injunction, Dunnes might, "accidentally or carelessly", launch comparative advertising campaigns in the future which would infringe the plaintiffs’ trade marks. Mr Justice Cregan also referred to the failure on the part of Dunne’s to answer Aldi’s pre-trial correspondence.
- While most comparative advertising campaigns are of a short duration (normally shorter than the period in which an interlocutory injunction could be obtained), the decision provides a strong incentive for trade mark owners to pursue final injunctive relief at trial. It provides trade mark owners with the prospect of obtaining permanent court protection against future unlawful comparative advertising campaigns that are run by a competitor.