File under: “Not what trade mark protection was made for”

The Sunday Times recently carried a report on the bowdlerization of an ad being run to encourage people to pay for their TV licence.

In the commercial a woman specifically attributed her frozen facial expression to the trademark anti-wrinkle injection [Botox]. Allergan, the American company that manufactures Botox in Westport, Co Mayo, complained about the advertisement to An Post, which collects the licence fee, and to RTE last June.

The broadcaster agreed to pull the commercial and replace it with a version that didn’t refer to Botox by name … Rory Coveney, a spokesman for RTE, said the advert was not pulled because it implied the character could not express emotion. “Allergan put in a request to An Post to change the ad because the term Botox is a trademark and they then wrote to us,” Coveney said. “We are ultimately responsible for putting the ad on air. The mistake was that Botox was used as a colloquial term, but just like Hoover, it’s a trademark.”

The mere fact that Botox is a trade mark doesn’t grant Allergan absolute control over how it is used and the example given by Coveney is interesting, as trade mark protection doesn’t prohibit the colloquial use of the mark. Allergan, Hoover, Google and others rightly monitor the use of their trade marks very carefully but they cannot require the media to remove all reference to their products when it suits them.

Could Allergan mount a complaint under section 14(3) of the Trade Marks Act 1996, that the use of the word Botox in the ad was without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark? Taking such a complaint to court would necessarily involve an exploration of the effects of Botox on one’s capacity for facial expression and an argument that the ad unfairly suggests that Botox diminishes that capacity for expression.

Or is the real issue to do with adverstising codes?

Janet Kettle, a spokeswoman for Allergan in the UK, said the company was concerned the RTE ad breached advertising rules. “Botox is a prescriptive product and you can’t advertise it directly to consumers,” she said. Allergan has brought cases to defend the name of its product in 75 countries, including Ireland.

There is something of the ridiculous to this justification for demanding alterations to the ad and it is difficult to see how RTÉ could be found in breach of any advertising rules, as suggested. Neither could it seriously be suggested that RTÉ could be in breach of the comparative advertising rules in the Consumer Protection Act 2007 or the Misleading and Comparative Marketing Communications Regulations.

Rather, this appears to be a case of using intellectual property rights to achieve an end which does not concern IP. The episode is reminiscent of recent road safety ads broadcast on RTE in which the logos were removed from cars used in the making of the ads, at the request of the car company (Renault and Ford).

These incidents don’t raise serious freedom of speech concerns of themselves, but do suggest a worrying rush to capitulation by advertisers and broadcasters when it comes to threats received from over-sensitive companies.