L'Oreal v Bellure
The IPKat is still scratching his furry little head over L'Oreal v Bellure. He thinks he might have cracked the AG's comments on Art.5(2) though - and they're not all bad. However, there is one fatal flaw...
The Court of Appeal asked whether there could be infringement by unfair advantage, even though the earlier mark did not suffer any harm to its essential function or to its distinctiveness or repute.
The AG (correctly in the IPKat's opinion) opined that what's important for unfair advantage is the benefit to the later user, rather than harm to the well-known mark. Such a benefit could occur without the earlier mark being harmed [IPKat comment: in fact, it's in the later user's interests here that the earlier mark isn't harmed, as this would mean that there would be less to take advantage of].
The fact that consumers connect the sign wouldn't be enough. Instead, what is needed, according to the AG, is that marketing of the later goods is made easier. However, it need not be the case that, but for the use of the offending mark, no sale would have been make. Instead, what is needed is that the link to the earlier mark must be a 'boost' to the later mark [IPKat comment: this has got to be right - how many sales depend purely on the trade mark that they bear?]
This begged the question though - when would such a boost be 'unfair'? The AG used a neat trick to get around this - use is only fair when there is no 'due cause' for the later user to use the mark. [This is the bit that the IPKat has problems with. The UK courts have taken the position that 'due cause' is very narrow - essentially just earlier rights or necessity. This would mean that almost every advantage would be unfair. It would also mean that the courts would have to ignore the word 'unfair' and just rely on whether or not there is unfair advantage. To the IPKat's mind, the really unfortunate thing here is that the AG wants everything to rest on whether there is 'due cause' but the ECJ has never defined what is meant by that term. The AG doesn't acknowledge this which means that, even if he is right, his decision doesn't clarify when an advantage is unfair at all.]
IBIL seminars online
Don't just rely on the IPKat's opinions on this case though. The slides and an audio recording of last week's UCL IBIL seminar on dilution are available here. You can also find a recording of IBIL's seminar on the European Commission's interim report into the pharmaceutical industry in the same place.