The Saga of L’Oréal  v Bellure  case has finally come to its end. Lets make a brief recall of the most important case facts. Bellure has three ranges of products called Stitch, Création Lamis and Dorrall. Each member of the range smells like a famous, luxury branded perfume known by a well-known registered trade mark. L’Oréal alleges that Bellure’s use of comparison lists for each of the three ranges of product, showing which products correspond to which L’Oréal perfume, infringed its registered trade marks for those perfumes.

Reference for a preliminary ruling from the Court of Appeal (England and Wales-Civil Division) received at the CJCE concerning the interpretation of certain Articles of the trade marks Directive  89/104/EEC of 21 December 1988 and of the misleading and comparative advertising Directive 84/450/EEC of 10 September 1984 as amended by the Directive 97/55/EC of 6 October 1997.

By his ruling delivered on 18th of June 2009 (Case C-487/07), the CJCE stated that the taking of unfair advantage of the distinctive character or the repute of a mark 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. The Court also considered that the comparison lists of perfumes indicating the names of the luxury products of L’Oréal could be qualified as comparative advertising. Besides, 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.

Following the CJCE decision, the British Court of Appeal strongly criticizes the non-justified expansion of the scope of trademark protection, as defended by the European Court of Justice. As Lord Justice Jacob affirmed, ” If a trader cannot (when it is truly the case) say: “my goods are the same as Brand X (a famous registered mark) but half the price”, I think there is a real danger that important areas of trade will not be open to proper competition”.

Εdited by Marina Markellou

REFERENCES: High court of justice, Court of appeal (civil division), 21 mai 2010, n° EWCA Civ 535, Case n° A3/2006/2258, L’Oréal SA Lancome Parfums et Beaute & CIE Laboratoire Garnier & CIE c/ Bellure NV Malaika Investments Ltd (t/a Honeypot Cosmetic & Perfumery Sales) (7) Starion International Ltd –