The recent case of L’Oréal v Bellure highlights the rapidly changing law regarding trademark protection. In this case, the defendant sold cheap perfumes which had a similar smell to luxury brands, and advertised them using comparison lists. L’Oréal, who owned many of the trade marks mentioned in the comparison lists, sued for infringement of their trademarks.
The European Court of Justice (“ECJ”) was asked to give guidance on the matter, and they held that, under the Trade Marks Directive, an infringement would take place if the defendant had affected any of the functions of the trademarks, or had taken unfair advantage of the trademarks. Further, the ECJ held that, under the Comparative Advertising Directive, advertisers cannot state (explicitly or implicitly) that their product or service is an imitation or replica of a product bearing a well-known trade mark.
The Court of Appeal interpreted the former part of this guidance to mean that the ‘functions’ of a trademark would be affected if they had been used by the defendant in anything other than a purely descriptive sense. As such, businesses using comparative advertising must be acutely aware that the law is relatively strict when it comes to the use of third party trademarks.
Businesses must ensure that they do not take ‘unfair advantage’ of other’s trade marks in the course of doing business. Certain types of comparative advertising, for example, those which take advantage of a third party’s marketing to their own benefit, may be considered unlawful.
Any business which uses comparison lists as a marketing tool to promote their products will need to review their current practice carefully to avoid the risk of infringement proceedings.
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For more information in relation to the subjects discussed in this article, please contact a member of our Commerce & Technology team on 0800 024 1976 or via our online form, and they will be happy to assist.