Ads & Brands Law Digest: January 2022

As usual, for each item, we provide a succinct summary accompanied by a link to the full text of the relevant official source or our own report. In this edition, we report on new guidance from the ICC and CAP and BCAP on environmental claims, guidance on referring to disabilities in advertising, CAP guidance on guarantees, Ofcom’s final guidance on advertising for video sharing platforms, and another fine by the ICO for unsolicited direct marketing.  We also consider the Estate of JRR Tolkien taking action against bad faith registration of the ‘JRR Token’ crypto-currency domain and the fact that UK-qualified lawyers cannot appear in EU proceedings regarding intellectual property rights.

In this issue: 

• Advertising and marketing
• Regulatory
• Domain names and trade marks – arbitration and litigation

Advertising and marketing

ICC issues new guidance on environmental claims in marketing and advertising

The ICC has published updated guidance for responsible environmental marketing communications to help marketers and advertisers make truthful and useful environmental claims.

The updated ICC Framework for Responsible Environmental Marketing Communications aims to help marketers evaluate environmental communications to maintain consumer confidence in these claims. The ICC Framework helps marketers craft environmental messages that adhere to the basic global principles of truthful, honest and socially responsible communications.

The updated ICC Framework addresses some emerging claims seen in the marketplace, including terms such as “net-zero’, “climate positive”, “carbon neutral”, “micro-plastics free”, “not made with fossil fuels”, and updated guidance on claims like “compostable”, “biodegradable” and others.  It also discusses standards for the growing number of aspirational claims, which are increasingly common as more and more businesses around the world make commitments to reduce adverse impacts on the climate. Companies communicating aspirational claims to reflect the environmental commitments or climate goals they aim to achieve in future years — such as “net-zero by 2050” – should be able to concretely demonstrate the methodological approach they are using to enable them to meet those commitments.

The ICC Framework also provides guidance related to recyclability claims and the use of material identification codes such as the Mobius loop.

For more information, see here.

CAP and BCAP publish guidance on misleading environmental claims and social responsibility

Continuing the theme, CAP and BCAP have also published guidance to help advertisers interpret their rules that concern environment-related advertising issues. The rules broadly relate to misleading environmental claims and social responsibility. The guidance sets out the existing principles of the ASA system’s regulation of environmental claims.
The increased urgency for businesses and other stakeholders playing their part in tackling climate change and other environmental harms is reflected in domestic and international legislation on climate change, such as net zero targets included in the Climate Change Act 2008 (and subsequent secondary legislation) and a target to limit global temperature rise in the Paris Agreement. 

Given the role that advertising can play in influencing consumer behaviour, this policy-making context is important to the regulation of environment-related advertising issues by CAP, BCAP and the ASA. It sets the broad context for the areas of concern in which the ASA will, in future, be minded to take a stricter interpretation under the CAP and BCAP Codes, where evidence exists of misleading or socially irresponsible advertising that concerns the environment. 

The ASA will carry out a series of enquiries into specific issues including aviation, heating/energy, cars, waste, and animal-based food.

For more information, see here.

CAP issues guidance on referring to people with disabilities in ads

CAP issues guidance on referring to people with disabilities in ads CAP has issued guidance on ferring to people with disabilities in advertisements. The guidance groups together three key things to avoid, and two other points to consider, to help to ensure advertisements do not breach the advertising codes if referencing disability. It reminds advertisers that disability is a protected characteristic under The Equality Act 2010, and is listed in the advertising codes as something which advertisers must ensure that they do not present in a way which is likely to cause serious or widespread offence. The three things are:

• Don’t mock disability, or people with a disability.
• Don’t present negative stereotypes about people with disabilities.
• Don’t trivialise or make light of disability.

Ads for charity are often given more leeway by the ASA when assessing the likely offence caused. Charity ads can often include hard hitting messages and these can be more effective if presented in a way which may have been problematic if used by a commercial company. 

As well as ensuring that ads do not cause offence, they must not mislead. Ads may be misleading if the omit material information and in some circumstances, accessibility details may be considered material. Whether this is the case or not will differ on a case by case basis, but advertisers should consider whether this information is necessary for the consumer to make an informed decision.  The medium in which the ad appears is likely to have an impact on this, as was demonstrated by an upheld ASA ruling concerning an ad for a holiday which appeared in a disability lifestyle magazine, but did not state that the holiday was not suitable for certain access requirements.

For more information, see here.

CAP issues guidance on guarantees

CAP has issued guidance about guarantees. It says that offering a guarantee or warranty can give consumers some added comfort when making a purchase – particularly when it involves larger sums of money.  That said, the word ‘guarantee’ can have many different meanings and not all warranties are created equal, so any restrictions or limitations must be clear.

The guidance sets out five points:

• Make sure the meaning of the “guarantee” claim is clear.
• Don’t make an absolute performance claim you cannot prove.
• Don’t confuse between “lowest price guarantee” and “lowest price guaranteed”.
• Tell people about any restrictions on your guarantee.
• Make sure you honour your guarantees.

For more information, see here.

Regulatory

Ofcom issues final guidance on advertising for video sharing platforms

Ofcom has issued its final guidance on advertising for VSPs. Since 1 November 2020, new rules around protecting users from harmful content, including standards around advertising, have applied to UK-established VSPs.

The statutory framework for VSP advertising distinguishes between advertising that is marketed, sold or arranged by the VSP provider and advertising that is not. Ofcom consulted in 2021 on a regulatory approach that reflected this distinction and one that was designed to be as straightforward and technology-neutral as possible. It also consulted on proposals to designate the ASA to administer day-to-day regulation of VSP-controlled advertising – with Ofcom as a statutory backstop regulator – and draft guidance designed to help VSPs to understand and comply with their advertising obligations. 

Ofcom has published its designation of the ASA and its final guidance om advertising on VSPs as well. 

A new Appendix has been included in the UK Code of Non-broadcast Advertising and Direct & Promotional Marketing which will apply to aspects of advertisements on VSP services that are subject to statutory regulation under the Communications Act 2003 (as amended). This Appendix contains rules reflecting the new statutory requirements.

For more information, see here and here.

ICO fines Northern Gas & Power Ltd £75,000 for spam calls

The ICO has fined Northern Gas & Power Ltd £75,000 for making nuisance marketing calls to people for nearly two years. It has also issued an enforcement notice ordering them to stop making nuisance calls to people and businesses who do not want to receive them. Northern Gas & Power Ltd made nuisance marketing calls to people who did not want to receive them or who were registered with the Telephone Preference Service or Corporate Telephone Preference Service.

For more information, see here.

Domain Names and Trade Marks – Arbitration & Litigation

Estate of JRR Tolkien takes effective action against bad faith registration of ‘JRR Token’ crypto-currency domain

When it comes to abusive registrations of “.com” domain names, i.e. registrations taking unjustified advantage of trade marks or brands belonging to someone else, the WIPO Arbitration and Mediation Center offers the possibility of (relatively) swift and painless justice by seeking Administrative Panel Decisions under its Uniform Domain Name Dispute Resolution Policy (UDRP).  If the complainant brand owner can show that: (i) the domain is identical or confusingly similar to its mark/brand; (ii) the person who registered it has no rights or legitimate interests in the mark/brand; and (iii) the person who registered the domain did so in bad faith; then the complainant can have the disputed domain name transferred to it by order of the Panel.

In this case, the domain name <jrrtoken.com> had been registered by a Florida resident and used alongside <thetokenofpower.com> to host a website for the sale of digital tokens, corresponding to a digital currency.  The website also included imagery relating to wizards and the works of JRR Tolkien, and included the phrase “The One Token That Rules Them All”.  The Estate of Professor JRR Tolkien, author of The Hobbit and The Lord of the Rings, owns UK and US trade marks for “J R R Tolkien”, on which it based a complaint to the WIPO UDRP Administrative Panel.

The Panel found in favour of the JRR Tolkien Estate, ordering the transfer to it of the <jrrtoken.com> domain.  Working through the three-step test set out above, the Panel concluded that: (i) despite the removal of two letters from the Tolkien name, the disputed domain was recognizably similar to the registered marks, and clearly intended to bring to mind the author’s name; (ii) there was no bona fide reason for the choice of the disputed domain, it was chosen in the knowledge of JRR Tolkien’s work to evoke a connection to it and thus profit from the associated goodwill and reputation; and (iii) the registrant’s argument that the domain name was not registered in bad faith as it was a “parody” was rejected – non-commercial parodies are sometimes permitted, but this registration was clearly commercial and moreover it was not humorous (even it was arguably a “clever” play on words).

For more information, see here

EU General Court rejects appeal from EUIPO Board of Appeal trade mark ruling because legal representatives were UK-based  

One of the consequences of Brexit was that it severely curtailed the ability of purely UK-based lawyers and IP attorneys to represent clients before the EU Intellectual Property Office and before the EU courts.  This does not affect the ability of Lewis Silkin to continue to represent our clients before the EUIPO or the EU courts because we have in our IP team lawyers and attorneys based and qualified in Ireland, who can continue to do so.  But a General Court ruling issued in December 2021 provides a salutary reminder of the impact of Brexit for those with UK-only representatives, and also clarifies an important aspect of how the transitional rules apply in respect of ongoing proceedings at the EUIPO.

In July 2021 Daimler AG submitted papers to the EU General Court to bring an appeal against a ruling of the EUIPO Board of Appeal in trade mark opposition proceedings between itself and Volkswagen AG.  Daimler’s representatives were stated to be Mr D Moore “a patent attorney litigator”, together with Mr D Ivison and Ms K Nezami, both of whom are barristers at 11 South Square chambers in London.  

Rather than engage with the substantive merits of Daimler’s application, the General Court on 7th December issued an Order dismissing the action as “manifestly inadmissible” on the grounds that none of its stated legal representatives had standing to act before the Courts of Justice of the EU (including the General Court).  Daimler in its application had relied upon the special transitional arrangements relating to Brexit which do permit UK representatives to continue to act before the EUIPO in respect of ongoing proceedings in “all stages of procedure before that Office”.  But the General Court has ruled that this continuity does not extend to an appeal from EUIPO rulings to the EU courts, i.e. representation before the EUIPO in its various procedures (including Boards of Appeal) is a different thing from representation before the EU courts, even though the latter is a continuation of the former in terms of the IP being disputed.  (The patent attorney litigator would in any case not have been able to act before the General Court – even pre-Brexit – as such representatives do not qualify as “lawyers” for the purposes of representing parties before the EU courts.)

This General Court ruling accords with the EUIPO’s Communication 02/20 on the subject issued before the end of the Brexit transition period.  Daimler will presumably now appoint suitably EEA-based lawyers to take its appeal to the General Court.  But if the result is to send the case back to the EUIPO for further proceedings, then Communication 02/20 (see page 7 of the Explanatory Note) says that Daimler can then revert to using its previous UK-based representatives for any further EUIPO stages if it so wishes. 

For more information, see here and here.