D produced 3 “smell-a-likes” of 3 perfumes made by C (L’Oreal). The names of each of the perfumes imitated was protected by a trade mark. C claimed that its trade marks relating to the 3 perfumes were infringed by:
1) D’s packaging, which sought to imitate that of C; however this claim dropped.
2) “Comparison lists” used by D (i.e. lists on the back of packages indicating which of D’s perfumes smelled like which of C’s)
- E.g. “Stitch No 7 smells like Trésor”
· See notes.
· In present case, use of trade mark was not descriptive (as in Arsenal FC)
Ø Rather it was for comparative purposes
· Thus was used for purpose of advertising
Court of Appeal (2010):
· “I have real difficulty” in dealing with the communication/advertisement/investment functions
Ø Is nothing in legislation about them
Ø Are conceptually vague and ill-defined
· Appears to be that any comparative advertising is banned.
Ø i.e. as it will automatically impinge on advertisement function.
· Court appears to be saying that where advantage is taken of an earlier trademark, this is automatically unfair.
· Thus is no distinction between:
i) Permissible free-riding
ii) Impermissible free-riding
· This amounts to pointless monopoly.
· On basis of ECJ’s preliminary judgment:
1) Comparison lists breach Article 5(1)(a)
- As they adversely affect advertising function of C’s mark
2) Comparison lists also breach of Article 5(2)
- As they take advantage of reputation of C’s mark