The European Court of Justice ("ECJ") delivered a
significant judgment on 18 June 2009 on whether cheap imitations of
L'Oréal perfumes, which were clearly not the trade
marked goods but were marketed in such a way as to 'wink
at' L'Oréal's well known brands, infringed
L'Oréal's trade marks and whether they were
protected as permissible comparative advertising.
Bellure & Others1 produce and market perfumes
designed and packaged to look and smell like certain well known
L'Oréal fragrances. These "smell-alike"
perfumes were only sold to wholesalers or retailers, but Bellure
& Others produced lists which indicated to potential customers
the named L'Oréal fragrance that was being 'winked
at'. Assurances such as "Only your wallet smells the
difference" also appeared on these comparison lists.
In October 2006, L'Oréal2 issued
proceedings in the English High Court against Bellure & Others
for trade mark infringement for the use of their trade marks on the
comparison lists. L'Oréal contended that the use of
these comparison lists for selling the products of Bellure &
Others and dealing with customers' queries, was contrary to
s.10(1) of the Trade Marks Act 1994 ("TMA").
L'Oréal also claimed that the imitation of the packaging
of their products and the sale of perfumes in that packaging
constituted an infringement and took unfair advantage of the
distinctive character and repute of L'Oréal's
various trade marks contrary to s.10(3) TMA. The High Court held
that the use of L'Oréal marks on Bellure's
comparison lists constituted an infringement under s.10(1) TMA and
also s.10(3) TMA in respect of the products produced by Bellure
& Others which imitated L'Oréal's figurative
marks for its 'Tresor' box and 'Miracle'
Bellure & Others appealed the decision in the Court of
Appeal. Lord Justice Jacob's opinion was that, due to the
difference in pricing between L'Oréal fragrances and the
"smell-alike" perfumes, the public would not confuse
products of L'Oréal with products of Bellure &
Others and accordingly his view was that the two entities were not
in competition. L'Oréal, however, claimed that even
though there may be no detriment in terms of
L'Oréal's sales, Bellure & Others only achieved
their sales by taking unfair advantage of the reputation of
L'Oréal's trade marks. Lord Justice Jacob sought
clarification from the ECJ on the following questions.
Questions referred to the ECJ
Can there be trade mark infringement pursuant to Articles
5.1(a) or (b) of the Trade Marks Directive ("TMD") where
a trade mark is used in an advertisement to compare the
characteristics of products, and in particular their smell, where
the use causes no confusion, and no jeopardy to the trade
mark's essential function as an indicator of origin?
Is it an infringement of Article 5.1(a) of TMD where a
well-known trade mark is used by a trader in a comparison list to
indicate a certain characteristic of a product, but there is no
likelihood of confusion, no effect on the proprietor's...