News Item

Court of Appeal criticises ECJ ruling in L’Oréal v Bellure

1 July 2010

The Court of Appeal recently handed down its final judgment in L’Oréal v Bellure, following the ECJ ruling on 18 June 2009. The case had been referred back to the Court of Appeal to rule on the issue of Bellure’s use of L’Oreal’s trade marks on comparison lists.

As reported in our news article of 18 June 2009 ECJ opens the door to victory for L’Oréal, the case had involved an action for trade mark infringement brought by L’Oréal against Bellure for use of its trade marks on comparison lists, listing ‘smell-alike’ imitation perfumes. The ECJ said that the use of trade marks on comparison lists did constitute trade mark infringement.

Lord Justice Jacob reluctantly applied the ECJ’s ruling, holding that the comparison lists did infringe both Article 5(1)(a) and 5(2) of the Trade Marks Directive. However, he made it clear that he strongly disapproved of the ruling, as it had negative implications for both free speech and freedom to trade.

“I would add that a touch of reality is called for here. Consumers are not stupid. They will not see the cheap copy as being the same in quality as the original….

Any suggested rule of law which stands in the way of people telling the truth, whether the context be political, commercial or otherwise, ought to be scrutinised with care and justified only on the grounds of strict necessity”.

LJ Jacob also pointed out that there is no harm to the trade mark owner. His conclusion was that “poor consumers are the losers” in this case as they will now be deprived information which would let them know helpful information about the product they were trying to purchase, in this case which products smells like which famous perfumes. He also expressed his regret that the ECJ did not address the competition aspects of “riding on the coattails”, as they did not provide clear rules by which a trader can know clearly what he can and cannot do.

This decision, therefore, does not change the position for brand owners. However, LJ Jacob has highlighted an arguable controversy in the decision, that the ruling in L’Oréal may be indicating a trend towards favouring trade mark owners over free speech and competition.

For more information, contact your usual Marks & Clerk attorney or solicitor, or Alison Chin at achin@marks-clerk.com.