L'Oreal SA & Ors v Bellure NV & Ors

L'Oreal SA & Ors v Bellure NV & Ors

The Court of Appeal held that the use of comparison lists and certain packaging by the defendants raises important questions of EU law regarding trade mark infringement, honest commercial practices, and unfair advantage, which require reference to the European Court of Justice. The court found no passing off or actionable unfair competition absent misrepresentation. The appeal and cross-appeal are stayed pending the ECJ's guidance.

Parties
Claimant/respondent: L'Oréal S.A.; Claimant/respondent: Lancôme Parfums et Beauté & Cie; Claimant/respondent: Laboratoire Garnier & Cie; Defendant/appellant: Bellure N.V.; Defendant/appellant: Malaika Investments Limited (trading as Honeypot Cosmetic & Perfumery Sales); Defendant/appellant: Starion International Limited
Jurisdiction
England and Wales
Judgment Date
10 October 2007
Procedural Posture
Civil Appeal / Appeal From High Court (chancery Division, Intellectual Property) to Court of Appeal; Reference to ECJ Ordered
Outcome
Appeal and cross-appeal stayed in part pending reference to ECJ; other grounds dismissed.
Legal Topics
Trade Mark Infringement, Comparative Advertising, Passing Off, Unfair Competition, Misleading Advertising, Packaging and Get Up, Free Riding, Reputation of Trade Marks
Intellectual Property Trade Marks Unfair Competition Trade Mark Infringement Comparative Advertising Passing Off Misleading Advertising Packaging and Get Up +2 more

Case Brief

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Parties

L'Oréal S.A.

Claimant/respondent

Lancôme Parfums et Beauté & Cie

Claimant/respondent

Laboratoire Garnier & Cie

Claimant/respondent

Bellure N.V.

Defendant/appellant

Malaika Investments Limited (trading as Honeypot Cosmetic & Perfumery Sales)

Defendant/appellant

Starion International Limited

Defendant/appellant

Procedural Posture

Civil Appeal / Appeal From High Court (chancery Division, Intellectual Property) to Court of Appeal; Reference to ECJ Ordered

Legal Issues

  1. 1 Whether use of comparison lists referencing claimants' trade marks constitutes infringement under Art. 5(1)(a) of the Trade Marks Directive
  2. 2 Whether packaging and get-up of defendants' products infringes claimants' trade marks under Art. 5(2)
  3. 3 Whether use of comparison lists is saved by Art. 6(1)(b) as honest commercial practice

Ratio Decidendi

The Court of Appeal held that the use of comparison lists and certain packaging by the defendants raises important questions of EU law regarding trade mark infringement, honest commercial practices, and unfair advantage, which require reference to the European Court of Justice. The court found no passing off or actionable unfair competition absent misrepresentation. The appeal and cross-appeal are stayed pending the ECJ's guidance.

Court Disposition

Appeal and cross-appeal stayed in part pending reference to ECJ; other grounds dismissed.

Orders

  • Reference to the European Court of Justice on five formulated questions regarding trade mark use in comparison lists, unfair advantage, and imitation under the Directives.
  • Dismissal of claims for passing off and unfair competition.