L’Oreal v Bellure [2011] 9 E.I.P.R., 550

ECJ (2009)

• Judgement related to Article 5(1)(a)

Facts

• In present case, use of trade mark was not descriptive (as in Arsenal FC), rather it was for comparative purposes

• Thus was used for purpose of advertising

Court of Appeal (2010)

Jacobs LJ

• Article 5(1)(a)

  • “I have real difficulty” in dealing with the communication / advertisement / investment functions

    • Is nothing in legislation about them

    • Are conceptually vague and ill-defined

  • Appears to be that any comparative advertising is banned.

    • I.e. as it will automatically impinge on advertisement function.

• Article 5(2)

  • Court appears to be saying that where advantage is taken of an earlier trademark, this is automatically unfair.

  • Thus is no distinction between:

    1. Permissible free-riding

    2. Impermissible free-riding

  • This amounts to pointless monopoly.

Facts

• On basis of ECJ’s preliminary judgment:

  1. Comparison lists breach Article 5(1)(a), as they adversely affect advertising function of Claimant’s mark

  2. Comparison lists also breach of Article 5(2), as they take advantage of reputation of Claimant’s mark

RELATED CASES

• Arsenal Football Club v Reed