Fighting Back Against Misleading Competitor Advertising: How Garmin Successfully Navigated a Route to Banning Misleading Claims by TomTom in the United Kingdom and the Netherlands.

Daniel Haije, Partner, Hoogenraad & Haak, advertising + IP advocaten, Netherlands

Misleading advertising by a brand's competitors can take many forms. When it uses the 'target' brand's trade marks, and therefore falls within the narrow definition of explicit comparative advertising and potentially of trade mark infringement, the paths of legal recourse are well trodden. However, when the 'target' brand sees a rival striving to obtain a competitive advantage by making claims which it believes to be exaggerated, unsubstantiated, or otherwise misleading, but which do not use the target brand’s trade marks, its options are more limited. Modern technology and the growth of advertising on the internet are also creating new challenges. For example, a brand may have its place of establishment in one country, but its marketing function based in another, from where the marketing claims on its website are controlled. But when a consumer visits that website, with a '.com' domain name, the website can read the consumer's IP address and direct him to the appropriate national sub-site. This will mean the consumer sees pages in his local language, with localised content and prices quoted in the local currency. In that case, where should complaints about that advertising be heard? In the country where the advertiser is 'established' or the one from where its marketing is controlled? But if the advertising is localised, should it be heard in the country where the relevant complainant is based, regardless of whether that complainant is a competitor or a consumer?

Daniël Haije (+31 20 3053060 / dh@hoogenhaak.nl) was admitted to the bar in 2004. Chambers Europe recommends him as a "rising star in IP, advertising and media law". He advises and litigates on advertising-related matters and IP law, especially trademarks and trade names. Furthermore he provides discrete pre-publication or pre-broadcast advice to companies and individuals exposed to unwelcome press intrusion. Clients include celebrities, advertising agencies and companies in the sectors FMCG, entertainment, navigation, communication, aviation, fashion, and charity.

Hoogenraad & Haak (www.hoogenhaak.nl) is an independent boutique law firm based in Amsterdam. The firm counsels international and domestic corporate clients, mainly operating in the advertising, food, retail, fashion, entertainment and design industries. Hoogenraad & Haak is widely recognised as the pre-eminent firm for advertising law in the Netherlands, and is the Dutch member of the prestigious Global Advertising Lawyers Alliance (GALA). The firm can also boast a high profile broad IP practice, counselling clients such as Royal Ahold. In addition, Hoogenraad & Haak is one of only a few Dutch firms truly specialising in health, beauty and food law.