L'Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010)

L'Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010)

The use of L'Oréal's registered trade marks in the defendants' comparison lists constitutes infringement under Article 5(1)(a) of Directive 89/104 because the use is not purely descriptive but is for advertising purposes, affecting the communication, investment, and advertising functions of the marks. The use is not protected by the Comparative Advertising Directive as it presents goods as imitations or replicas and takes unfair advantage of the reputation of the marks, thus failing to comply with Article 3a(1)(g) and (h) of the CAD. Consequently, the use is not in accordance with honest practices and is without due cause.

Citation
[2010] EWCA Civ 535
Parties
Claimant/respondent: L'Oréal SA; Claimant/respondent: Lancome Parfums et Beaute & CIE; Claimant/respondent: Laboratoire Garnier & CIE; Defendant/appellant: Bellure NV; Defendant/appellant: Malaika Investments Ltd (t/a Honeypot Cosmetic & Perfumery Sales); Defendant/appellant: Starion International Ltd
Jurisdiction
England and Wales
Judgment Date
21 May 2010
Procedural Posture
Appeal / Court of Appeal Judgment Following ECJ Reference
Outcome
Appeal dismissed; trade mark infringement found in respect of comparison lists.
Legal Topics
Trade Marks, Comparative Advertising, Passing Off, Unfair Competition
Intellectual Property European Union Law Trade Marks Comparative Advertising Passing Off Unfair Competition

Case Brief

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Parties

L'Oréal SA

Claimant/respondent

Lancome Parfums et Beaute & CIE

Claimant/respondent

Laboratoire Garnier & CIE

Claimant/respondent

Bellure NV

Defendant/appellant

Malaika Investments Ltd (t/a Honeypot Cosmetic & Perfumery Sales)

Defendant/appellant

Starion International Ltd

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment Following ECJ Reference

Legal Issues

  1. 1 Whether use of comparison lists referencing L'Oréal's trade marks infringes registered trade marks under Article 5(1)(a) of Directive 89/104
  2. 2 Whether such use is protected by the Comparative Advertising Directive (CAD)
  3. 3 Whether the use constitutes taking unfair advantage or presenting goods as imitations under the CAD

Ratio Decidendi

The use of L'Oréal's registered trade marks in the defendants' comparison lists constitutes infringement under Article 5(1)(a) of Directive 89/104 because the use is not purely descriptive but is for advertising purposes, affecting the communication, investment, and advertising functions of the marks. The use is not protected by the Comparative Advertising Directive as it presents goods as imitations or replicas and takes unfair advantage of the reputation of the marks, thus failing to comply with Article 3a(1)(g) and (h) of the CAD. Consequently, the use is not in accordance with honest practices and is without due cause.

Court Disposition

Appeal dismissed; trade mark infringement found in respect of comparison lists.

Orders

  • Parties to address costs relating to 'historic' packaging by written submissions or further hearing if necessary.
  • All other consequential matters to be agreed between parties.