The Advocate General at the European Court of Justice (ECJ) has given his opinion in trade mark infringement proceedings brought by L’Oreal against companies marketing and selling cheap imitations of its perfumes.

In marketing the imitations, the defendants supplied retailers with a list which compared the smell of their products with luxury perfumes sold by L’Oreal such as “Tresor” and “Miracle”. In addition, the imitations were sold in packaging generally similar to that of the L’Oreal products although such packaging was unlikely to mislead consumers as to the origin of the products. L’Oreal issued proceedings for trade mark infringement in the UK alleging that the use of their registered marks in comparison lists by the defendants constituted infringement under section 10(1) of the Trade Marks Act 1994. The High Court found in favour of L’Oreal; however, when the case went to the Court of Appeal, the Court referred several questions to the ECJ. In essence it asked the ECJ to clarify to what extent use of a competitors’ marks in advertising was a trade mark infringement even if such use was simply to compare the characteristics of products (including smell) and did not cause confusion amongst consumers or prejudice the function of trade mark as a badge of origin.

The Advocate General decided that:

The use of L’Oreal’s registered trade marks in comparison charts would only constitute trade mark infringement under section 10(1) if this had an adverse effect on the marks’ functions including that as a badge of origin. This was so even if the use of the marks played a substantial role in the defendant’s marketing of their goods and allowed them to take unfair advantage.

Under section 10(2), L’Oreal could stop the use of a similar mark if the user derived an unfair advantage from its use or such use was without due cause.

Article 3 (a) (1) (g) of the Comparative Advertising Directive meant one could not conclude that simply using registered trade marks in a comparison list was taking unfair advantage of them. The national courts must decide whether such use took unfair advantage in the light of the facts of each individual case.

Article 3 (a) (1) (h) of the Comparative Advertising Directive did not prohibit comparative advertising from claiming that products had the same essential characteristics, including smell. It did however prohibit advertising that not only claimed the products had the same essential characteristics but also suggested the defendant’s products were a successful imitation of the L’Oreal products.

The AG’s decision is broadly favourable to trade mark owners; however, they will be awaiting the ruling of the ECJ to see whether it adopts the AG’s decision.

Click here to read the AG’s opinion in L’Oreal SA & Others v Bellure NV & Others.