L'Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd and Starion International Ltd.

• Jurisdiction: European Union
• Celex Number: 62007CJ0487
• ECLI: ECLI:EU:C:2009:378
• Date: 18 June 2009
• Court: Court of Justice (European Union)
• Procedure Type: Reference for a preliminary ruling
• Docket Number: C-487/07

Case C-487/07

L'Oréal SA and Others

v

Bellure NV and Others

(Reference for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division))

(Directive 89/104/EEC – Trade marks – Article 5(1) and (2) – Use in comparative advertising – Right to have such use prevented – Taking unfair advantage of the repute of a trade mark – Impairment of the functions of the trade mark – Directive 84/450/EEC – Comparative advertising – Article 3a(1)(g) and (h) – Conditions under which comparative advertising is permitted – Taking unfair advantage of the reputation of a trade mark – Presentation of goods as imitations or replicas)

Summary of the Judgment

1. Approximation of laws – Trade marks – Directive 89/104 – Well-known trade mark – Extended protection of non-similar goods or services (Article 5(2) of the directive) – Conditions governing the extended protection

(Council Directive 89/104, Art. 5(2))

2. Approximation of laws – Trade marks – Directive 89/104 – Right, for the proprietor of a trade mark, to prevent the use by a third party of an identical or similar sign for identical or similar goods or services – Use of the trade mark for the purposes of Article 5(1)(a) of the directive

(Council Directives 84/450, Art. 3a(1), and 89/104, Art. 5(1)(a))

3. Approximation of laws – Misleading and comparative advertising – Directive 84/450 – Comparative advertising

(Council Directive 84/450, Art. 3a(1)(g) and (h))

1. Article 5(2) of First Directive 89/104 on trade marks must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.

(see para. 50, operative part 1)

2. Article 5(1)(a) of First Directive 89/104 on trade marks must be interpreted as meaning that the proprietor of a registered trade mark is entitled to prevent the use by a third party, in a comparative advertisement which does not satisfy all the conditions, laid down in Article 3a(1) of Directive 84/450 concerning misleading and comparative advertising, as amended by Directive 97/55, under which comparative advertising is permitted, of a sign identical with that mark in relation to goods or services which are identical with those for which that mark was registered, even where such use is not capable of jeopardising the essential function of the mark, which is to indicate the origin of the goods or services, provided that such use affects or is liable to affect one of the other functions of the mark.

The first sentence of Article 5(1) of Directive 89/104 provides that the registered trade mark is to confer on the proprietor exclusive rights therein. By virtue of Article 5(1)(a) of that directive, those exclusive rights entitle the proprietor to prevent all third parties not having his consent from using, in the course of trade, any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.

The exclusive right under Article 5(1)(a) of Directive 89/104 was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark. These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising.

(see paras 57-58, 65, operative part 2)

3. Article 3a(1) of Directive 84/450 concerning misleading and comparative advertising, as amended by Directive 97/55, must be interpreted as meaning that an advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents ‘goods or services as imitations or replicas’ within the meaning of Article 3a(1)(h).

The particular object of the condition laid down in Article 3a(1)(h) of Directive 84/450 is to prohibit an advertiser from stating in comparative advertising that the product or service marketed by him constitutes an imitation or replica of the product or the service covered by the trade mark. In that regard, it is not only advertisements which explicitly evoke the idea of imitation or reproduction which are prohibited, but also those which, having regard to their overall presentation and economic context, are capable of implicitly communicating such an idea to the public at whom they are directed.

It is irrelevant in that regard whether the advertisement indicates that it relates to an imitation of the product bearing a protected mark as a whole or merely the imitation of an essential characteristic of that product.

Since, under Directive 84/450, comparative advertising which presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful, any advantage gained by the advertiser through such advertising will have been achieved as the result of unfair competition and must, accordingly, be regarded as taking unfair advantage of the reputation of that mark within the meaning of Article 3(1)(g) of that directive.

(see paras 75-76, 79-80, operative part 3)

JUDGMENT OF THE COURT (First Chamber)

18 June 2009 (*)

(Directive 89/104/EEC – Trade marks – Article 5(1) and (2) – Use in comparative advertising – Right to have such use prevented – Taking unfair advantage of the repute of a trade mark – Impairment of the functions of the trade mark – Directive 84/450/EEC – Comparative advertising – Article 3a(1)(g) and (h) – Conditions under which comparative advertising is permitted – Taking unfair advantage of the reputation of a trade mark – Presentation of goods as imitations or replicas)

In Case C‑487/07,

REFERENCE for a preliminary ruling under Article 234 EC from the Court of Appeal (England and Wales) (Civil Division) (United Kingdom), made by decision of 22 October 2007, received at the Court on 5 November 2007, in the proceedings

L’Oréal SA,

Lancôme parfums et beauté & Cie SNC,

Laboratoire Garnier & Cie

v

Bellure NV,

Malaika Investments Ltd, trading as ‘Honey pot cosmetic & Perfumery Sales’,

Starion International Ltd,

THE COURT (First Chamber),

composed of P. Jann, President of the Chamber, M. Ilešič (Rapporteur), A. Tizzano, A. Borg Barthet and E. Levits, Judges,

Advocate General: P. Mengozzi,

Registrar: R. Şereş, Administrator,

having regard to the written procedure and further to the hearing on 5 November 2008,

after considering the observations submitted on behalf of:

– L’Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier & Cie, by H. Carr QC and D. Anderson QC, and by J. Reid, Barrister, instructed by Baker & McKenzie LLP,

– Malaika Investments Ltd and Starion International Ltd, by R. Wyand QC, and by H. Porter and T. Moody-Stuart, Solicitors,

– the United Kingdom Government, by T. Harris and subsequently by L. Seeboruth, acting as Agents, and by S. Malynciz, Barrister,

– the French Government, by G. de Bergues and by A.-L. During and B. Beaupère-Manokha, acting as Agents,

– the Netherlands Government, by C. Wissels, acting as Agent,

– the Polish Government, by A. Rutkowska and K. Rokicka, acting as Agents,

– the Portuguese Government, by L. Inez Fernandes and I. Vieira da Silva, acting as Agents,

– the Commission of the European Communities, by W. Wils and H. Krämer, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 10 February 2009,

gives the following

Judgment

1 This reference for a preliminary ruling relates to the interpretation of Article 5(1) and (2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and Article 3a(1) of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising (OJ 1984 L 250, p. 17), as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997 (OJ 1997 L 290, p. 18) (‘Directive 84/450’).

2 The reference was made in proceedings brought by L’Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier & Cie (together ‘L’Oréal and Others’) against Bellure NV (‘Bellure’), Malaika Investments Ltd, trading as ‘Honey pot cosmetic & Perfumery Sales’ (‘Malaika’), and Starion International Ltd (‘Starion’), in which the claimants seek a declaration that their trade mark rights have been infringed by the defendants.

Legal context

Community legislation

3 Directive 89/104 has been repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), which entered into force on 28 November 2008. However, having regard to the date of the facts in the main...