Advocate General Mengozzi of the European Court of Justice (ECJ) has delivered his opinion on the dispute between L'Oreal and Bellure relating to "smell-a-like" perfumes and "look-a-like" packaging.

The key issue was whether Bellure had taken "unfair advantage" of L'Oreal's marks. The Advocate General's rather unclear opinion (at least in translation) appears to be that use of packaging which brings another's registered marks to mind and which results in the look-a-like product gaining a boost from the other's positive reputation and image is likely to amount to trade mark infringement. This is so unless a due cause for the similarities can be shown. In contrast, as comparative advertising is generally viewed as beneficial to consumers and in the public interest, smell-a-like comparison lists are less likely to amount to infringement.

Background

The UK High Court had concluded that Bellure's use of several of L'Oreal's word marks for its perfumes in comparison lists (designed to let consumers know which of its perfumes smelt like L'Oreal's) was an infringement under article 5(1)(a) of the Trade Mark's Directive. Further, L'Oreal's claim based on article 5(2) relating to Bellure's bottle/packaging, which was designed to "give a wink" to L'Oreal's registered 3D marks, was upheld but only in relation to L'Oreal's Trésor box trade mark and the Miracle perfume bottle trade mark. Bellure appealed and the Court of Appeal referred several questions to the ECJ. The ECJ was asked to consider –

a. whether the use of L'Oreal's word marks in comparison list of this type took unfair advantage of them so that no defence to trade mark infringement would be available to it under the Comparative Advertising Directive?

b. did use of Bellure's packaging/bottle shapes that were designed to "give a wink" to L'Oreal's registered 3D marks and which provided Bellure's products with a "boost" by doing so (but did not cause L'Oreal or its marks any harm) amount to taking "unfair advantage" of L'Oreal's marks under Article 5(2) of the Trade Marks Directive?

In respect to the comparison lists, the Advocate General was of the view that Bellure did not need any defence under the Comparative Advertising Directive because the national court had already concluded that no harm had been done to any of the functions of L'Oreal's marks. Harm of this nature is required for infringement under article 5(1)(a). If this defence did need to be considered it would be for the national court to determine whether such use was "unfair" by balancing the benefit provided to consumers by such comparative advertising against the boost obtained by Bellure and other factors. Only where the benefit to consumers was minimal and outweighed by such other factors could such use be "unfair".

The Advocate General indicated that if the attractiveness of Bellure's Tresor box and Miracle bottle marks were boosted because of their association with the reputation and positive image of L'Oreal's marks, Bellure had taken unfair advantage of them unless Bellure was able to point to any due cause for using such a similar box/bottle. This was also for the national court to determine.

Partner and trade mark law expert, Cerryg Jones, observes that, "the translation of the opinion makes for quite challenging reading". He also notes that, "this is an issue of great importance to brand owners so hopefully we will not have to wait too long for the ECJ decision to provide a clearer guide."