L’Oréal SA v Bellure NV (Opinion of Advocate General Mengozzi) [2009] C-487/07 related to some of L’Oréal’s perfumes and particularly the extent to which a well-known trade mark can be used for comparisons involving copy-cat products.

BACKGROUND

L’Oréal is the proprietor of national and Community Trade Marks in respect of the words TRÉSOR, MIRACLE, ANAÏSANAÏS and NOA NOA for perfumes and also marks relating to the bottles and boxes in which it markets its perfumes.

Bellure marketed perfumes that were sold by Malaika and Starion, which provided their retailers with lists comparing the smell and price of Bellure’s perfumes to those of L’Oréal, by reference to L’Oréal’s registered trade marks.

L’Oréal brought proceedings in the High Court alleging trade mark infringement of the word marks and bottle and box marks under Section 10(1) and 10(3) of the Trade Marks Act 1994, respectively. It was held that all of the word marks and some of the packaging marks had been infringed.

Starion and Malaika appealed the decision and the Court of Appeal referred questions to the European Court of Justice (ECJ) concerning the inter-relationship between the Trade Marks Directive (89/104/EEC) and the Comparative Advertising Directive (84/450/EEC).

OPINION

Advocate General Mengozzi considered that Article 5(1)(a) of the Trade Marks Directive must be interpreted as meaning that the proprietor of a trade mark cannot prohibit use by a third party in comparative advertising of a sign that is identical to that mark for goods or services which are identical to 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. However, he stated that such activities could be prohibited under Article 5(2), provided that the necessary requirements of that Article were satisfied.

The Advocate General considered that it would remain a matter for national courts to determine, on a case-by-case basis, whether or not the use of a sign takes unfair advantage of that mark’s reputation. He also considered that it was only necessary to asses whether advantage had been “unfair” if it had been established that there was no “due cause” for the use.

COMMENT

There has been extensive criticism of the Advocate General’s opinion, specifically its rather circular logic that advantage will always be unfair where use is without due cause. He did not define due cause and, in view of the narrow interpretation given to the phrase by the English courts, it is felt that nearly all advantage would be unfair if this opinion is followed by the ECJ.