Tuesday June 30th 2009, by Piers Strickland
The European Court of Justice (ECJ) has recently handed down its decision in the long-running case of L’Oréal SA v Bellure NV.
The case emanated from the use of L’Oréal trade marks in a list of products that were not genuine L’Oréal, but which nonetheless used the L’Oréal trade marks for comparative purposes.
The key question before the ECJ was to decide when use of the L’Oréal trade marks in comparative advertising would be taking “unfair advantage” and therefore amount to an act of trade mark infringement under the European Directive on Trade Marks (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks).
The ECJ held that a trade mark owner does not need to prove confusion and/or detriment in order to bring a claim for trade mark infringement for unfair advantage. Instead the ECJ held that unfair advantage could be obtained where:
“a party seeks…to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image”.
This case represents a significant victory for big well-known brand owners, not just those with famous trade marks in the perfume / luxury goods sector. This decision means that big brand owners, who have trade marks with a significant “reputation”, will be in a much better position to take action against those third parties who use their trade mark in comparative advertising.
