L'Oreal SA & Ors v Bellure NV & Ors

Under Directive 89/104, use of an identical registered mark for identical goods in an advertising comparison falls within Article 5(1)(a) unless the use is purely descriptive. A comparison list linking a lawful smell-alike perfume to a famous fragrance is advertising and is not purely descriptive.

Under Directive 84/450, as amended by Directive 97/55, an advertisement may present goods as imitations or replicas implicitly, including by identifying an imitation of an essential characteristic. Failure of that condition also constitutes unfair advantage under the condition concerning a competitor’s reputation. Non-compliant comparative advertising is unpermitted and cannot be treated as having due cause or complying with honest practices. The Court’s broader observations on truthful commercial expression and unfair advantage under Article 5(2) were obiter.

The respondents brought trade-mark claims concerning comparison lists used to market three ranges of perfumes which smelled like well-known luxury fragrances. The High Court proceedings arose from a 2006 judgment of Lewison J. The Court of Appeal’s earlier judgment in [2007] EWCA Civ 968, reported at [2008] RPC 196, resolved the passing-off and current-packaging issues but referred remaining trade-mark questions to the ECJ.

Following the ECJ’s judgment in Case C-487/07, the resumed appeal concerned whether the comparison lists fell within Article 5(1)(a), whether they complied with the comparative advertising conditions, and whether any use also infringed Article 5(2).

The substantive trade-mark issues were decided against the appellants. Jacob LJ gave the judgment, with Wall and Rimer LJJ agreeing. The defendants accepted that the two historic packages infringed; only the related costs issue remained for further determination.

1. Under Directive 89/104, the comparison lists used identical marks for identical goods. The use was made for advertising and therefore was not purely descriptive. It fell within Article 5(1)(a), notwithstanding the absence of consumer confusion, because the ECJ had indicated that the communication, advertising and investment functions of the marks were liable to be affected. The descriptive-use reasoning in Hölterhoff (Case C-2/00) did not govern this materially different use.
2. The conditions in Directive 84/450, as amended by Directive 97/55 had to be applied as interpreted by the ECJ. Article 3a(1)(h) has a wide scope. An advertisement may present goods as imitations or replicas implicitly. It is enough that it communicates an imitation of an essential characteristic, such as smell. The comparison lists therefore failed condition (h), and the ECJ’s composite answer treated the resulting advantage as unfair under condition (g). The Court noted that this construction departed from the earlier principle in Toshiba (Case C-112/99) and Pippig (Case C-44/01) that comparative-advertising conditions should be construed favourably to comparative advertising.
3. The submission that advertising could be unpermitted without being unlawful was rejected. The comparative-advertising conditions were exhaustive. Failure to comply meant that the use was without due cause and was not in accordance with honest practices for the purposes of Article 6(1)(b) of Directive 89/104.
4. Jacob LJ’s views on Article 5(2) were unnecessary to the disposition. He would have permitted the point to be raised on appeal and would have found unfair advantage where the comparison lists clearly exploited the image or characteristics of marks with a reputation. The absence of blurring or tarnishment did not answer the separate unfair-advantage limb.
5. The Court expressed regret that the result restricted truthful commercial information and lawful competition, but national courts were bound to apply the ECJ’s interpretation.

1. Court of Appeal (Civil Division): In the present resumed appeal, [2010] EWCA Civ 535, the Court applied the ECJ’s answers and decided the comparison-list issues against the appellants.
2. European Court of Justice: On 18 June 2009, in Case C-487/07, the Court answered questions referred on the scope of Article 5(1)(a), comparative advertising and Article 5(2).
3. Court of Appeal (Civil Division): In the earlier stage, [2007] EWCA Civ 968, reported at [2008] RPC 196, the Court resolved the passing-off and current-packaging issues and referred the remaining trade-mark questions.
4. High Court, Chancery Division: The appeal arose from Lewison J’s 2006 judgment in claim HC03 C04344.