Posted by Scott Buchanan, Partner DLA Piper Australia

This morning, I participated in a round table discussion on comparative advertising issues in Asia. I was the only representative from Australia and had a good audience of representatives from India, HK, Japan and also from the US.  I wanted to share some of the most interesting points from the discussion, and invite you to continue the discussion in the comments below.

  • In India, disparaging advertising is reported to be an increasing problem.  Companies should be aware their brand could be subject to ridicule in advertising in India.
  • Disparaging advertising not specifically legislated against in Australia.  Instead, this sort of advertising is largely moderated by commercial and cultural influences which results in consumers not responding positively to a company’s disparaging attack on a competitor particularly where the attack is baseless, scandalous or amounts to innuendo. To the extent that an advertisement is untruthful then possible grounds may exist under our ACL (misleading or deceptive conduct) or passing off. HK, Japan and US reported similar situations in their countries.  in the cases of Japan and US, additional potential remedies to comparative advertising issues exist under Unfair Competition laws. 
  • Representatives from most jurisdictions agreed that disparaging advertising is unlikely to amount to trade mark infringement because no ‘use as a trade mark’. 
  • Enforcement of trade marks in China: HK representative advised that enforcement in China is improving for overseas trade mark owners but the emphasis is on overseas trade mark owners to register in China. China’s trade mark system operates on a first to register basis making it important for companies to protect their mark in China. 
  • Each jurisdiction represented in this discussion reported that matrix of laws dealing with passing off, copyright, trade dress (US), statutory misrepresentation provide a means for dealing with a competitor’s conduct which ‘sails too close to the wind’.

Comparative advertising is one of those issues that underscores the importance of having your company’s marketing team work closely with the legal team.  

What do you think?  Is comparative advertising effective?  Which country has it “right”?