Judge applies ECJ L'Oreal v Bellure verdict with "regret"
In a strongly worded judgement, Lord Justice Jacob of the England and Wales Court of Appeal has said that he must "with regret" hand victory to French cosmetics firm L'Oreal in a trademark infringement case against Belgian perfume maker Bellure.
The ruling follows a European Court of Justice opinion in June 2009, which said that Bellure had infringed L'Oreal's trademark when it compared the smell of its own perfume to that of the French cosmetic firm's scents.
"Even though their perfumes are lawful and do smell like the corresponding famous brands, does trademark law nonetheless muzzle the defendants so that they cannot say so?" wrote Lord Justice Jacob in his ruling. "I have come to the conclusion that the ECJ's ruling is that the defendants are indeed muzzled... I think, with regret, that the answers we have received from the ECJ require us so to hold."
L'Oreal first sued Bellure in 2006 for selling perfumes packaged in bottles which were allegedly similar to L'Oreal's trademarked scents. In 2007, the UK High Court ruled against Bellure but, on appeal, the court referred some questions to the ECJ for clarification.
In particular, the Court of Appeal wanted clarification on whether the fact that Bellure was providing retailers a list of which trademarked L'Oreal perfumes its own products were meant to replace amounted to infringement.
The ECJ said that Bellure was "riding on the coat-tails" of L'Oreal in gaining unfair advantage in breach of EU rules on misleading and comparative advertising, whether the public was confused by the similarities or not and even if L'Oreal had suffered no financial loss.
Lord Justice Jacob said: "As I have said I do not agree with or welcome this conclusion - it amounts to a pointless monopoly. But my duty is to apply it."
However, the judge added that: "My own strong predilection, free from the opinion of the ECJ, would be to hold that trademark law did not prevent traders from making honest statements about their products where those products are themselves lawful."
Trademark lawyer Hamish Porter, who advised Bellure on the case, said the judgement was disappointing "particularly as the court has stepped back from its previous finding of fact that the use of comparison lists did not interfere with the origin function or any other function of L'Oreal's trademarks."
"As [Lord Justice Jacob] states in his judgment, it is a strange anomaly that, while it is permissible under European law to manufacture a perfume that smells like those sold under famous brands, you cannot tell the public which famous brand it smells like," added Porter.
Peter O'Byrne, a lawyer who acted on behalf of L'Oreal said: "Businesses beyond the perfume industry that engage in comparative advertising that refers to competitor brands should now look very carefully at whether they are now at risk of claims. The English Court has signalled that this judgment has consequences wherever competitor product brands are used for advertising purposes."
The court will decide on damages at a later date.
