'Limitations On Imitations: No More Free Rides' — The ECJ's Recent Decision On Comparative Advertising

Author:Ms Emma Lenthall
Profession:Reed Smith
 
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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.

Background

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'

bottle.

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...

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