Brussels, 18/06/2009 (Agence Europe) - On Thursday 18 June 2009, the European Court of Justitce ruled that it is against EU law to present the product of a third party as an imitation of one of a trademark holder's products, even if the imitation is unlikely to cause confusion in the minds of consumers about the manufacturer's identity (Case C-487/07).
French company L'Oréal has therefore won its case against Bellure, a British company manufacturing and selling perfumes resembling the packaging of some of L'Oréal's perfumes. The European Court of Justice answered in its rulings questions raised by the High Court of Justice (England and Wales), to which L'Oréal had taken a counterfeiting case against the manufacturers of imitations.
On Bellure's argument that packaging for its perfumes Malaika and Starion are not identical with those of L'Oréal, the Court noted that infringement can exist without a danger of consumers confusing the products in question. Council Directive 89/104/EECon trademarks bans the sale of products whose appearance is designed to create an association in the consumer's mind, even if it is not counterfeiting exactly. This is to avoid free-riding on a manufacturer by benefitting from a competitor's work to improve the branding of its products.
The Court of Justice clarified the scope of protection of verbal and figurative trademarks. If somebody produces packaging imitating the packaging of a big brand, then it would be seen as gaining unfair profit, explained Iain Connor, a lawyer specialising in intellectual property law for British lawyers Pinsent Masons. Connor believes the impact of this ruling will be signficiant for private trademarks, those of supermarkets, for example.
The Court of Justice also ruled for the first time on the circumstances when publicity can explicitly mention a competitor's brands. This is allowed by Council Directive 84/450/EEC on comparative advertising, as long as the brands do not damage or are not likely to damage investment or publicity. The 'comparative list' drawn up by Bellure indicated which of its perfumes were supposed to imitate L'Oréal perfumes - an aim taking 'unfair advantage' of L'Oréal's good name, according to the Court of Justice. (C.D. trans fl)