L'Oréal SA v Bellure NV
Taking advantage of the reputation of a trade mark, by using comparison lists and similar packaging for cheap smell alike perfumes, can be taking unfair advantage of the mark, even without confusion or harm.
Facts
L'Oréal sold luxury perfumes, such as Trésor and Miracle, under well known trade marks. Bellure sold cheap imitation perfumes, which smelled similar, in bottles and packaging that resembled L'Oréal's, although no one was confused. The distributors gave retailers comparison lists, showing which of their perfumes corresponded to which of L'Oréal's. L'Oréal sued for infringement, and the Court of Appeal referred questions to the Court of Justice.
Legal principle
The Court of Justice held that the taking of unfair advantage of the distinctive character or repute of a mark, under article 5(2) of the Trade Marks Directive, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or repute of the mark. Where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat tails of that mark in order to benefit from its power of attraction, reputation and prestige, and to exploit the marketing effort expended by the proprietor, without paying any financial compensation, the advantage is unfair. The comparison lists were also not permitted comparative advertising, because they presented the goods as imitations.
Related cases on trade marks: infringement
- Arsenal Football Club plc v Reed Case C-206/01, [2002] ECR I-10273
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc Case C-39/97, [1998] ECR I-5507
- Cartier International AG v British Telecommunications plc [2018] UKSC 28, [2018] 1 WLR 3259
- Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41, [2016] FSR 30
- General Motors Corp v Yplon SA (Chevy) Case C-375/97, [1999] ECR I-5421
- Google France SARL v Louis Vuitton Malletier SA Joined Cases C-236/08 to C-238/08, [2010] ECR I-2417
- Intel Corp Inc v CPM United Kingdom Ltd Case C-252/07, [2008] ECR I-8823
- Interflora Inc v Marks & Spencer plc [2014] EWCA Civ 1403, [2015] FSR 10
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