Swedish Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB) is one of the IPKat's favourite correspondents because he likes to use his brain in order to exercise the brains of others. He is very concerned about the recent ruling of the Court of Justice of the European Communities in Case C-487/07 L'Oréal v Bellure (discussed here by the IPKat and here, on the same blog, by another of the IPKat's favourite correspondents, Professor Dirk Visser). Writes Mats:
"I wonder if you can help me in this matter?Who would like to rise to this challenge, wonders the IPKat. Merpel reminds readers that there are still a couple of days in which to cast your vote on the poll (you can find it at the top of the side-bar) as to whether L'Oréal v Bellure is the best thing since sliced bread or an unmitigated evil, or something in between.
Concerning ECJ´s ruling in L'Oréal v Bellure I wonder if this decision is consistent with EC´s Directive 2005/29 on Unfair Commercial Practices (UCPD)?
In Wetherill and Bernitz, The Regulation of Unfair Commercial Practices under EC Directive 2005/29, New Rules and New Techniques, Hart, 2007, p. 42, you can read the following:
“The standard of assessment is touched upon in one of the Recitals (14), which declares that it is not the intention of the Directive to reduce consumer choice by prohibiting the promotion of products which look similar to other products unless this similarity confuses consumers as to the commercial origin of the product and is therefore misleading. This recital can be read as a pronouncement in favour of a rather restrictive view of the scope of protection offered… This would be more in line with the rather restrictive view on passing-off prevailing in English law than with the elaborate German case law”.
Professor Ulf Bernitz -- you may call him Mr IP in the north -- confirms in his chapter "Misleading Packaging, Copycats and Look-alikes: an Unfair Commercial Practices", in Ezrachi et al, Private Labels, Brands, and Competition Policy, Oxford 2009, p. 218:
“From a legal point of view, trade mark law constitutes the basis. However, trade mark protection is often not broad enough to catch the use of copycats and look-alikes. They often avoid being so confusingly similar that they would constitute trade mark infringement. In this regard, it is of fundamental importance to which extent there exist principles of unfair competition law suitable to the problems. On this point, the law is far from uniform. The possibility of taking successful legal action against the practice seems to be particularly restricted in the UK; English law on passing off tends to require proof of actual misleading. In other countries, e.g. Germany and the Nordic countries, unfair competition or marketing law offers wider possibilities for successful legal action in this kind of cases. However, the recent EC Directive 2005/29 on Unfair Commercial Practices has changes the basic legal perspective substantially”. And at p. 229: “This recital (14) can be read as a pronouncement in favour of a rather restrictive view on the scope of protection offered, indicating the priority of consumer perception and thus possibly reducing the application of the Directive to instances of clear deception of consumers looking for a particular brand or the like. This would be more in line with the rather restrictive view on passing-off prevailing in English law…”
The ECJ´s ruling in L'Oréal v Bellure is based, as I believe, on the notion of protection of investments, cf AG´s opinion in Case C-206/01 Arsenal v Reed. But is it consistent with the law?
I´m rather confused, and wonder if any IPKat friends, including Professor Visser, can bring order to all of this?"