L'Oreal SA & Ors v Bellure NV & Ors

Whether a trader may use a competitor’s well-known mark in a truthful comparison list, without confusion or harm to the mark’s origin function or reputation, raised unresolved questions of European trade mark and comparative-advertising law. A reference to the ECJ was therefore required.

For article 5(2), similarity requires a link between sign and reputed mark, assessed globally by reference to the registered mark. A link exists only where the similarity is liable to move consumers to buy. Passing off requires a misrepresentation, including where an article is itself an instrument of deception. The common law does not recognise a general tort of unfair competition which dispenses with misrepresentation.

The claimants owned well-known fine-fragrance marks. The defendants sold cheap smell-alike fragrances. They used comparison lists identifying the corresponding fine fragrance, and some products had packaging intended to make a non-deceptive allusion to the original.

Lewison J held that the comparison lists infringed, that certain historical packaging infringed under article 5(2), and rejected other trade mark, passing-off and unfair-competition claims. His decision is reported at [2006] EWHC 2355 (Ch) and [2007] RPC 328.

The defendants appealed the adverse findings. The claimants cross-appealed findings concerning other packaging. The central issues were the application of articles 5 and 6 of the Trade Marks Directive to comparison lists and packaging, and whether English passing off extended to non-deceptive unfair competition.

1. Disposition. The cross-appeal was dismissed. The defendants’ appeals concerning the comparison lists and the historical packaging of La Valeur and Pink Wonder were stayed pending a reference to the ECJ. Keene LJ agreed with Jacob LJ. Blackburne J agreed with the reference and the operative conclusions, although he reserved his position on whether the comparison lists and a commercial advantage obtained through the packaging should ultimately be lawful.
2. Comparison lists. In context, the lists stated that the defendants’ fragrance had a smell like the named fine fragrance. That was an indication of a characteristic of the defendants’ goods within article 6(1)(b) of the Trade Marks Directive. The use was promotional, but caused no confusion, tarnishment, blurring or loss of sales. It remained uncertain whether it fell within article 5(1)(a), and whether it complied with the conditions governing comparative advertising, especially unfair advantage and presentation as an imitation or replica. Those questions required ECJ guidance. The judge below had wrongly treated the lists as inseparable from the Creation Lamis packaging.
3. Article 5(2). A reputed mark requires a globally assessed link between the registered mark and the defendant’s sign. The assessment is founded on the mark as registered, not on extraneous marketing material. On the facts, the historical La Valeur box and bottle and the historical Pink Wonder bottle created a link; the current products and the other signs complained of did not. The unresolved meaning of unfair advantage also required an ECJ reference for the historical products.
4. Registration qualifications. The colour limitation on the Trésor box mark did not confine protection to the precise spatial arrangement shown. Conversely, the transferred disclaimer of a device of a container prevented reliance on bottle shape alone as infringement of the Trésor bottle mark.
5. Passing off and unfair competition. An instrument of deception must itself make a false representation. A supplier of an honest product is not liable merely because a downstream seller may lie about it. Passing off therefore failed. The court also rejected the invitation to create a free-standing common-law tort of unfair competition without misrepresentation.

• Court of Appeal (Civil Division): comparison-list and historical-packaging appeals stayed for a reference to the ECJ; cross-appeal dismissed: [2007] EWCA Civ 968.
• High Court, Chancery Division (Intellectual Property): Lewison J decided the trade mark, passing-off and unfair-competition claims: [2006] EWHC 2355 (Ch); [2007] RPC 328.