Advocate general delivers opinion in smell-alike case

European Union
Advocate General Mengozzi has delivered his opinion in the reference for a preliminary ruling by the Court of Appeal of England and Wales in the case of L’Oréal SA v Bellure NV (Case C-487/07, February 10 2009).
In this case, the defendants were selling perfumes which imitated the fragrances of a number of L’Oréal SA’s well-known brands. The names and packaging of the defendants’ products alluded to the names and packaging of the equivalent L’Oréal brand, signposting to the consumer which famous brand the defendants’ products were intended to imitate. In addition, one of the defendants provided to its wholesale and resale customers a comparison list which indicated the brand names of each of the defendants’ products next to the equivalent famous brand whose fragrance had been imitated. The comparison list was held to be an 'advertisement' falling within the ambit of the Comparative Advertising Directive (97/55/EC) and thus the rules relating to comparative advertising came into play.
The Court of Appeal referred five questions to the European Court of Justice (ECJ) - four relating to the interpretation of the Comparative Advertising Directive and one relating to the interpretation of Article 5(2) of the First Trademarks Directive (89/104/EEC), now the Trademarks Directive (2008/95/EC) (for further details please see "Legality of L'Oréal smell-alikes wafts in the direction of the ECJ").
The advocate general’s proposed answers to the questions, if adopted by the ECJ when it gives judgment later this year, would provide the following clarification to the relationship between the Comparative Advertising Directive and the infringement provisions of the First Trademarks Directive - and, in particular, to the meaning of the expression "to take unfair advantage" used in both directives:
  • If the use by the defendant of the claimant’s trademark does not affect the essential function of the trademark (ie, to provide a guarantee of the origin of goods) or any other function of the trademark (eg, communicating an aura of quality or prestige to the consumer), whether or not the use is made in a comparative advertisement, such use does not infringe the trademark under Article 5(1)(a) of the First Trademarks Directive, even if the use takes unfair advantage of the reputation of the trademark.
  • For a comparative advertisement to be permissible, it must not take unfair advantage of the trademark applied to the product which the advertiser compares to its own product. However, as it is in the very nature of a comparative advertisement for some advantage to be taken of the other party’s trademark, the national court must determine whether the advertisement is intended to cause the consumer to associate, by way of extension, the trademark’s reputation with its own product and, if so, whether the advantage taken of the reputation is unfair, having regard to all the facts of the case.
  • Similarly, to be permissible, a comparative advertisement must not present (expressly or by implication) the product of the advertiser as an imitation or replica of a product protected by another person’s trademark. This is not limited to counterfeit goods, but can also apply where the product has been produced in such a way as to imitate or reproduce the trademarked product, even where only one of the essential characteristics of that product is alluded to. However, a comparative advertisement will be permissible if it simply states that the advertiser’s product has an essential characteristic that is identical to that of the trademarked product.
  • "Taking unfair advantage" within the context of an infringement claim under Article 5(2) of the First Trademarks Directive is to be interpreted as meaning the commercial benefit derived from the association of a product with the reputation of the trademarked product as a result of the similarity between the name or get-up of the product and the trademark, where there is no due cause for the use of the similar sign. Where there is due cause, for example in a comparative advertisement, the national court must take all relevant circumstances into account in deciding whether that benefit is unfair, it being unnecessary for the trademark owner to show any harm to its trademark or its reputation, or any other damage arising from the use of the similar sign.
Hamish Porter, Field Fisher Waterhouse LLP, London

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