Ads & Brands Law Digest: October 2019

Advertising & Marketing

ASA ruling on the need for transparency regarding affiliate links

The ASA told both Matalan Retail and the blogging site The Londoner that they needed to do more to ensure that affiliate links from the blog to products on the Matalan site were obviously identifiable as marketing communications, and to make clear before customers engaged with them that the links had a commercial intent. A travel blog by The Londoner had included a picture featuring a red dress, with links below it through to two dresses for sale on the Matalan website. If readers clicked on those links, The Londoner would earn commission on any sales generated for Matalan.

The ASA therefore ruled that readers needed to be alerted to the fact that the blog was not purely editorial in nature, ideally by the use of a prominent identifier such as #ad. A suitable form of presentation also needed to be used to ensure that readers understood the commercial nature of the links before they clicked on them; a general statement in the blog’s FAQs, that affiliate links were sometimes used, was insufficient.

Read more here

Two ASA rulings on inappropriate use of the Google Ads system to create sponsored links on search results pages

The Google Ads system (formerly known as Google AdWords) allows advertisers to bid upon search terms entered into Google, with a view to sponsored links advertising their product or service being displayed on the results page when the relevant search terms are used. Two recent ASA rulings serve as a reminder that the CAP Code very much applies to search advertising, and that there are traps for the unwary – particularly when using such ads to promote products or services for which the Code has special rules to protect children and vulnerable consumers (both of the ads in question related to gambling).

In the first ruling, 32Red had used the phrase “jack and the beanstalk” both as a Google Ads search term and in the wording of the resulting sponsored link, which advertised a “high risk” game by the same name on their gambling website. Not surprisingly, the ASA found that such a reference was likely to be of particular appeal to children, and that its use as a chosen term in Google Ads amounted to directing gambling ads towards those under 18, in breach of the Code.

Less immediately obvious, perhaps, was the risk of breaching the Code that Casumo, a gambling app, ran when deciding to target its ads at those who searched for “gambling” or similar terms in Google. This had the unfortunate effect of generating sponsored links for the Casumo app even when a Google user typed “how to unsubscribe from all gambling” into the search box. The ASA found that Casumo was in breach of the CAP Code for irresponsible targeting of its ads, which were likely also to be seen by vulnerable consumers trying to avoid gambling content. What the ASA expected Casumo to have done differently was to make better use of the Google Ads “excluded terms” tool, which suppresses the ads when the excluded search terms are used in combination with the term being bid upon. In this case, by choosing “unsubscribe” as an excluded term Casumo would have prevented their ad from being displayed when a Google search used their key term “gambling” but also included the term “unsubscribe”).

Read more here and here

Ofcom rules studio branding in live feed of cricket coverage to be unduly prominent

A TV channel called Hum Masala serving the Pakistani community in the UK and Europe fell foul of the Ofcom Code when it broadcast coverage - via a live feed produced by a third party – of the Pakistan Super League cricket. The studio from which the coverage was presented and analysed included very prominent use of logos for nine products and services, which Ofcom found to have breached Rule 9.5 of its Code against undue prominence. Ofcom distinguished between branding present at the sporting venue itself, which may be more acceptable (because unavoidable), and branding “exclusively intended for viewers of the programme” such as in the studio in this case. It was no defence for the UK-based broadcaster to say that the branding in the studio was out of its control because it was part of the third party’s live feed: Ofcom said that such circumstances “do not absolve an Ofcom licensee of its responsibilities to ensure that the content it transmits complies with the Code.”

Read more here (see page 13 of Ofcom Bulletin)

Court of Appeal clarifies that leases for outdoor advertising screens were not subject to special procurement rules

When a local authority enters into “service concession contracts”, certain special rules and formalities apply to the procurement process. However, as a result of a dispute between bidders for the lease and operation of two towers with advertising screens controlled by the London Borough of Hammersmith and Fulham, the Court of Appeal has confirmed that such leases do not amount to “service concession contracts” and thus the special procurement rules and formalities do not apply.

Read more here

Data Privacy

EU Court of Justice confirms that pre-ticked boxes are no good for cookie consent

It has for a long time been best practice - as required by Guidance from the UK Information Commissioner’s Office, for example - but the EU Court of Justice has recently re-confirmed that to obtain valid consent under the E-Privacy rules for the dropping of cookies it is not sufficient for an internet user to be presented with a pre-ticked checkbox, which the user must de-select to refuse his or her consent. (Instead, valid consent will require a more active process, such as ticking a blank checkbox.) The Court also confirmed that: (i) the consent must be specific to the dropping of the cookies, and thus cannot be combined with consent to something else (in this case, participation in a promotional lottery); and (ii) the user must be told how long the cookies will operate for, and whether or not they may be accessed by third parties.

Read more here

Trade Marks & Designs

The latest position regarding Brexit implications for trade mark and design owners

The UK IPO had recently announced that it was going to suspend many of its normal activities from 31st October to 4th November 2019 for “systems maintenance” to cope with the consequences of Brexit – not least the issuing of “comparable UK trade marks” and “re-registered UK designs” to those who would lose UK protection via their EU trade marks and Registered Community Designs when Brexit took place. However, given the granting of the latest Article 50 extension by the EU until 31st January 2020, the “systems maintenance” and the issuing of new UK rights have themselves been postponed, at least until 31st January 2020 (or any subsequent extension date…) And if a deal is finally concluded with the EU, then the changes to trade marks and designs and related systems maintenance will not take place until the end of the so-called “implementation period” (currently 31st December 2020, but that too could be extended.)

Read more here and here

Advocate General gives Opinion on the need for clarity and precision when specifying a trade mark’s applicable goods and services

The UK High Court referred questions to the EU Court of Justice on this point in the case of Sky plc v Skykick UK Limited, after the defendants argued that Sky’s trade marks were invalidly registered due to bad faith, given that there was no genuine intention to use the marks in all of the relevant classes of goods or services for which they had been registered. The Advocate General in his Opinion supported this argument, in particular where the TM applicant’s sole objective in registering the mark in particular classes was to prevent third parties from entering the market. (But TMs would only be invalidated for those classes for which there was no genuine intention to make use.) More generally, the AG also suggested that a lack of clarity and precision – e.g. in using an over-broad term such as “computer software” – could be considered contrary to the public interest and thus render registrations invalid. The EU Court of Justice has yet to rule in this case, and so it remains to be seen whether the Court chooses to follow the recommendations of the Advocate General.

Read more here

An IP & Enterprise Court ruling flags up potential dangers relating to where unregistered designs are first disclosed

In UK proceedings regarding a potential infringement of unregistered Community design protection for soft toys known as “Squeezamals”, the defendant had raised as a defence the fact that the toys were first exhibited at a toy fair in Hong Kong, several months before they were first disclosed in the EU at a toy fair in Nuremberg, Germany. The defendant’s argument was that the prior disclosure in Hong Kong rendered the design unprotected in the EU as it was not “novel” at the time of disclosure within the territory of the EU. The view of the UK judge was that the defendant was correct in this argument, but he has referred questions to the EU Court of Justice in this case as the relevant legislation is ambiguous as to how the requirements of novelty should be interpreted. If the UK judge’s interpretation is upheld, it has important consequences for businesses who rely upon unregistered design protection within the EU – they must ensure that the event by which they first disclose the design takes place within the territory of the EU. If and when Brexit takes place, and the UK is not within the territory of the EU, this would have particular implications for those who wish to rely upon unregistered design protection in both the UK and EU; a strategy of simultaneous disclosure in both territories might have to be considered.

Read more here