Advocate general Paolo Mengozzi of the European Court of Justice has sided against L’Oreal in the bulk of his judgements on the trade mark infringement case against Belgium-based Bellure, which has since ceased trading, and UK distributors Starion and Malaika.
In his recommendations to the European Court of Justice, Mengozzi suggested that Bellure did not break EU trade mark law when the company compared its perfumes to big name L'Oreal brands with slogans like "only your wallet smells the difference".
The publication of his opinions follows the referral of the case from the UK Court of Appeal and in advance of a ruling by the European Court of Justice. The court usually adopts the views of the advocate general but in this case Fiona McBride, trade mark specialist at law firm Withers & Rogers, said that would be surprising.
McBride told CosmeticsDesign.com the interpretation of trade mark law was “extremely narrow” so that unless a company said that it deliberately copied an aspect of a product it would not be in legal danger.
She said the comments were “bad news for L’Oreal” as they stand but that, in her opinion, they are unlikely to be followed in the ruling.
"Bellure has used L'Oreal trade marks to gain significant commercial advantage," added McBride.
In his comments, the advocate general said it is up to national courts to decide whether any advantage taken through comparison with another brand is unfair and that the mere existence of a comparison does not constitute an unfair advantage.
Mengozzi said: “It is not possible to conclude on the simple basis of the fact that a trader, in a comparison list, compares his product with a product identified by a well known mark that the advertiser takes unfair advantage of that mark’s reputation.”
Crucially, Mengozzi also said that EU trade mark law does not prohibit an advertisement solely on the grounds that it states that “the advertiser’s product has an essential characteristic that is identical with that of a product bearing a protected trade mark, including well known marks.”
The European Court of Justice is expected to rule on the case towards the end of the year.