The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 10 February 2009

Breaking news: Advocate General opines in L'Oréal v Bellure

This afternoon, after an interminable delay, the Opinion of Advocate General Mengozzi of the Court of Justice of the European Communities was finally posted on the Curia website in Case C-487/07 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, a reference for a preliminary ruling from Court of Appeal (England and Wales) made on 5 November 2007.

Right: for some, the transaction from look-alike to smell-alike is no big deal ...

This case arises from a bitterly contested dispute relating to the referential use of well known perfume trade marks in order to indicate the similarity of the brand owner's scent to that of a cheap smell-alike competitor. The IPKat will be giving his further thoughts on this Opinion once he has read it. In the meantime, the Advocate General's recommendation, shorn of analysis and reasoning, looks like this:

"(1) Article 5(1)(a) of ... Council Directive 89/104 ... must be interpreted as meaning that the proprietor of a trade mark is not entitled to prohibit use by a third party in comparative advertising of a sign that is identical with that mark for goods or services which are identical with those for which the mark is registered where such use does not affect or is not liable to affect the mark’s essential function of providing a guarantee of origin or any of the mark’s other functions and that is the case even if such use plays a significant role in the promotion of the advertiser’s goods and, in particular, permits that advertiser to take unfair advantage of the mark’s reputation

(2) Article 3a(1)(g) of Council Directive 84/450 ... concerning misleading and comparative advertising, as amended ..., must be interpreted as meaning that it is not possible to conclude on the simple basis of the fact that a trader, in a comparison list, compares his product with a product identified by a well known mark that the advertiser takes unfair advantage of that mark’s reputation and that if, where such an advantage exists, it can be presumed that the public at whom the advertising is directed is caused to associate the proprietor of the well known mark with the advertiser in such a way that the public might associate by way of extension the reputation of the former’s products with those of the latter, it is for the national court to determine whether that advantage is unfair in the light of all the relevant individual circumstances of the case.

(3) Article 3a(1)(h) of Directive 84/450, as amended ..., must be interpreted as meaning that:

it prohibits an advertisement which alludes, explicitly or by implication, bearing in mind its economic context, to the fact that the advertiser’s product has been manufactured in such a way as to imitate or reproduce a product protected by another person’s mark, even where only one or more of the essential characteristics of that product is alluded to; and,

– consequently, it does not prohibit an advertisement solely on the ground that it states that the advertiser’s product has an essential characteristic that is identical with that of a product bearing a protected trade mark, including well known marks. [Still trying to work out how these paragraphs relate to one another. Has a word or two been left out?]

(4) Article 5(2) of Directive 89/104 must be interpreted as meaning that:

where a trader uses a sign that is similar to another person’s mark and derives an advantage from this originating in that similarity and in the consequential association of that sign with the positive qualities of that mark, such use may be prohibited if it is without due cause, which cannot be the advantage itself, or, where due cause is shown, if it is apparent, taking such due cause and all the relevant circumstances of the case into account, that that advantage is unfair; [Still trying to fathom this out too ...]

that prohibition cannot be precluded on account of the fact that there is no effect (or likelihood of any effect) on the mark’s essential function of providing a guarantee of origin, no effect (or likelihood of any effect) on the mark’s distinctive character or reputation and such use has no impact on the sales of the products identified by the mark or on the return on the investments made in connection with that mark".
IPKat note on the Court of Appeal's reference for a preliminary ruling here
Perfume Bloggers aggregator of perfume blogs here
Create your own fragrance here and here


Anonymous said...

The AG's conclusions on 3a(1)(h) of Directive 84/450 (although at first glance irreconcilable) attempts to draw a distinction between advertising claiming a product has an essential characteristic of another trade marked product (which the AG says is ok) and advertising claiming that a product not only has an essential characteristic but has it as a consequence of a deliberate and sucessful attempt to imitate/reproduce that characteristic - see para 84 of the opinion.

Hugo Cox said...

So, comparative advertising is unfair if it doesn't benefit consumers. The consumer is happy when she (or her bloke) learns how to save money or buy something she wouldn't otherwise have been able to afford. She's less amused when her exclusive smell becomes commonplace. But the Court of Appeal has already made up its mind that Bellure's products won't damage the reputation (or sales) of L'Oreal's...

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':