Dare to compare
Trademark references and comparative
advertising claims face a fresh approach
that may be tough on challenger brands
Perfume battle has seen the European Court of Justice (ECJ) take a new line on trademark references in advertising and comparative advertising campaigns. A recent ruling from the ECJ could make comparative advertising a riskier tool for “challenger” brands.
A whiff of disagreement
L’Oréal brought a case in the English High Court against Bellure and others that manufacture and distribute “copycat” perfumes, which mimic L’Oréal’s well known brands. L’Oréal sued for “passing off” and also for trademark infringement in respect of the copying of identical brand names for use in comparison charts, and the production of bottles and packaging which were “similar” to L’Oréal’s registered bottles and packs.
In turn, Bellure claimed its comparison list was permitted by the Comparative Advertising Directive. All parties concerned accepted that there was no chance of consumers being confused into believing the copycat products were made by the same people as the “fine fragrances”, and it was this lack of consumer confusion that meant L’Oréal’s “passing off” claim failed.
So, did lack of confusion as to source in this case mean the trademark infringement claims failed? Or was detriment to L’Oréal, or some form of unfair advantage of its brands’ repute or distinctive character, enough? This is what the High Court asked the ECJ.
The ECJ’s view
The ECJ’s decision was a complex one, so here we look only at the aspects of that decision relevant to comparative advertising:
Just because use of a third‑party trademark in advertising does not jeopardise that mark’s function as an indicator of origin, does not mean there cannot be trademark infringement.
The ECJ held that there will be an advantage that has been unfairly taken of the distinctive character or the repute of a company’s mark where a third party attempts to “ride on the coat-tails” of that mark in order to benefit from its “power of attraction, its reputation and its prestige” and to exploit the mark’s marketing effort.
In a claim that an advertiser has taken unfair advantage of the distinctive character or repute of a third-party mark, there is no requirement “that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or repute of the mark or, more generally, to its proprietor”.
This case must now return to the English High Court for its final decision, so we shall await the comments the High Court judges add to the mix.
Case notes
What does L’Oréal v Bellure mean for advertisers?
Anna Montes is an associate at Osborne Clarke. E-mail her at editorial@themarketer.co.uk
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