Have Gymbox and Maybelline’s fake ads broken the law?

Fake out-of-home ads could potentially infringe on intellectual property and trademark legislation, according to specialist advertising lawyers.

Sonal Patel-Oliva, director of franchising, advertising and commercial law at Field Fisher told The Media Leader that in both the Gymbox and Maybelline scenarios they were “implying an association” with or endorsement from Transport for London (TfL).

Such an implication could be illegal under “passing off” law, a common law tort aimed at preventing one trader from misrepresenting goods or services as being the goods and services of another. It also prevents a trader from associating their goods and services with another when this is not true.

The passing off law is “more complicated”, Patel-Olivia added, using the example of M&S’s legal battle with Aldi in 2021 over Colin and Cuthbert caterpillar cake products, or when brands use a celebrity image to associate them with their product when that celebrity has never used or endorsed the product in any way.

She explained: “What you’re doing is you’re trying to basically ride off the goodwill of another brand, and in those two scenarios [with Gymbox and Maybelline] what they’re doing is they’re implying an association with TfL. And to the naked eye, it looks like it is and you’re not aware that it’s CGI; it looks like TfL have sold that space to them.”

Patel-Oliva said the impression that TfL had sold the media space to the brands to put up their advertising campaigns was “misleading”, and by doing these fake campaigns they were implying that TfL had consented to use of their imagery, which is where a potential “passing off” claim comes into play.

Such a potentially credible claim by could result in a cease-and-desist letter being sent, but this is assessed on a case-by-case basis, she concluded.

Would a consumer assume an endorsement?

Brinsley Dresden, partner and head of advertising and marketing law at Lewis Silkin LLP told The Media Leader that there were a few legal arguments to consider.

He said: “Passing off effectively means an implied endorsement. Is there an implied endorsement of Gymbox by the fact that there’s apparently an ad on the top of the bus when there’s not? Would a consumer seeing that image think TfL is endorsing Gymbox? I don’t think they would, any more than whenever anyone sees an ad on media that’s owned by TfL. They don’t immediately assume that there’s some some kind of endorsement by TfL of the advertiser. They just assume that TfL sold some ad space to the advertiser.”

Dresden added that another possible legal argument that TfL might have would be if there is “a private legal wrong of conversion”, which he described as “analogous with theft”.

“Have they effectively stolen the right to put the ad on the roof of the bus?” he asked. “But I think the problem then for TfL would be if they don’t sell that space, they haven’t suffered any loss.”

Dresden said the other thing to consider would be whether any of the fake ads incorporate any registered trademarks of TfL, like the famous roundel on Tube signs. He said it was “arguable” there is some trademark usage in both fake ads, but it was not “clear cut” because it is very minor and in the background.

He concluded: “Unless people are being misled into wanting to buy or make further enquiries about a particular product or service, I can’t really see there’s that much of an issue.”

What about the ASA?

Both lawyers told The Media Leader that press releases, like the one from Gymbox that duped several trade publications including The Media Leader, would fall outside of the Advertising Standard’s Authority’s (ASA) jurisdiction. However, Dresden qualified that if a press release were to be included on their website or homepage, for example, then it would fall under the ASA’s remit. If that were the case, the regulator would look at whether it was misleading and if there was any consumer detriment.

“It is not entirely clear that there is [consumer detriment in the Gymbox case], so the ASA’s involvement would be quite limited,” he explained. “But if you look at something like the Maybelline ad on the Tube with the mascara, again I suppose if Maybelline put that on their own social media channels, then that would bring it within ASA jurisdiction. So, somebody could complain to the ASA and it would have to say it is either misleading or somehow breaks the rules on social responsibility, but it’s not immediately obvious it does either of those things.”

Patel-Oliva agreed that with fake out-of-home ads it is difficult for advertising rules to be applied because they are a PR stunt and so do not fall within the ASA’s remit. However, with the separate Maybelline example where a mascara wand was attached to the Selfridges building with CGI, if people were travelling down specifically to view it in person and it was not there, then that would be misleading, which is something that might bring a complaint to the ASA.

The Media Leader understands that when outdoor media owners have a strong case for brands “passing off” ads on their inventory, the typical route is to book a campaign at market rate retrospectively and legal proceedings are put on hold. Unbranded outdoor media owner sites are more often used by brands for mock-ups to avoid these kind of legal issues.

Global and TfL declined to comment when asked by The Media Leader if a cease-and-desist letter had been issued to Maybelline or Gymbox for their fake ads.