The Referential Use of Another’s Trademark in the Context of Comparative Advertising

Abstract

Within the broader question of the permissibility of the referential use of another’s trademark, the author deals with the trademark aspects of comparative advertising. This matter is regulated in the EU and Serbia by the rules of unfair competition law and trademark law, and the author reflects on the origin and perspectives of the intertwining of these two areas. The research is organized around the division of the information content of the trademark into navigation goodwill and surplus goodwill. Navigation goodwill corresponds to the function of a trademark to indicate the origin of the marked product, while surplus goodwill describes the reputation of the trademark. The limits of protection of surplus goodwill are problematic in legal theory and practice. One highlight of research is the interpretation of the legal prohibition on comparative advertising of products that are imitations or replicas of the reference product. Another highlight is the conclusion that free riding on the reputation of another’s trademark, when comparatively advertising a competing product, is not unfair (impermissible) per se. Unfairness must be based on additional circumstances, especially harm to the reputation of the trademark.