Kingspan Group Plc & Anor v Rockwool Ltd

Comparative advertising is unlawful where, viewed as a whole and by reference to its intended audience, it gives a misleading impression or fails objectively to compare material, relevant, verifiable and representative features of competing products. A fire test designed for exposed internal surface products cannot properly support conclusions about the fire risks of products designed for different installations, such as external roof boards. Disclaimers do not cure a misleading overall message where the imagery and commentary invite viewers to draw contrary conclusions. Trade mark infringement may arise where comparative advertising takes unfair advantage of, or causes detriment to, a mark’s reputation and denigrates the competitor’s products. Malicious falsehood additionally requires proof of malice; misleading publication made in good faith is insufficient.

Kingspan brought claims against Rockwool concerning promotional road shows and videos comparing mineral wool products with Kingspan insulation products. It alleged registered trade mark infringement, malicious falsehood and sought declarations concerning the accuracy of representations about fire performance. Rockwool brought a related action seeking declarations that the ISO 9705 fire test was appropriate for comparing the products and that tests shown in one video complied with that standard.

The central issues were whether the demonstrations and videos were misleading comparative advertising, whether they infringed the relevant trade marks, and whether the publication of the videos constituted malicious falsehood.

1. Misrepresentations. The road shows and videos conveyed that the tests represented the real fire risks of Kingspan products when properly installed and used as intended. That impression was false and misleading. The TR 26 and K11 roof boards were designed for installation above a roof deck, not on the internal walls and ceiling of a room. The KS1000 MR panel was not intended for installation on a room ceiling or on all four walls.
2. ISO 9705. The standard was intended to evaluate the contribution to fire growth made by surface products forming exposed internal wall or ceiling surfaces. It did not evaluate the contribution of external roof boards when installed as intended. The tests on TR 26 and K11 therefore were not carried out in accordance with the method required by the standard. The test on KS1000 MR fell within the standard’s scope, although its results could still be presented misleadingly.
3. Comparative advertising. Under the MCA Directive, the conditions governing comparative advertising are cumulative and must be assessed by reference to the average consumer addressed. The promotional material failed objectively to compare material, relevant, verifiable and representative features and denigrated Kingspan’s products. It took unfair advantage of, and caused detriment to, the repute of the KINGSPAN and KOOLTHERM marks.
4. Malicious falsehood. The videos contained false representations calculated to cause pecuniary damage, but malice was not established. Rockwool had acted in good faith and had relied on testing undertaken with the involvement of a reputable laboratory.
5. The registered trade mark claim succeeded in relation to the 2007 road shows and 2007 Video. Distribution of the First Video would also infringe. The malicious falsehood claim failed. The precise form of order and declarations was reserved.