Michael John Long is an LLM Candidate advancing to the PhD at Osgoode Hall Law School

Lord Justice Jacob, sitting for the England and Wales Court of Appeal, recently stated in his ruling that he was obligated to award L’Oreal (the cosmetics giant behind ‘Because You’re Worth It!’) victory in the high profile trademark infringement case against the perfume producer, Bellure.  The decision, however, does not come lightly.

The case was initiated in 2006 when L’Oreal sued Bellure for selling perfume which was packaged in bottles similar to that of its own trademarked product.  In an early instance of this case, the High Court ruled in favour of L’Oreal.  On appeal, however, the court referred a number of questions to the European Court of Justice for review.

The issue the Court of Appeal was asked to consider was whether the list of trademarked L’Oreal perfumes, which Bellure provided to its retailers to show customers which Bellure perfume was similar to which L'Oreal perfume, constituted infringement.  Following The European Court of Justice, it was held that Bellure was breaking the laws set out by the European Union on misleading and comparative advertising, despite whether potential customers were confused by the similarities or not and despite whether L’Oreal had actually suffered any monetary loss.

Lord Justice Jacob, as mentioned above, did not agree with the ECJ, but was obligated to uphold its ruling.  He added to the opinion that his ‘own strong predilection, free from the opinion of the ECJ, would be to hold that trade mark law did not prevent traders from making honest statements about their products where those products are themselves lawful.’

And so, in the wake of the upheld decision we are left pondering whether trademark law actually prevents us from telling the truth.  As Lord Justice Jacob asks, ‘even though their perfumes are lawful and do smell like the corresponding famous brands, does trade mark law nonetheless muzzle the defendants so that they cannot say so?’

One reason Lord Justice Jacob posed this question was due to the fact that the decision harms those who lack the means to pay for the more expensive and recognizable product.  ‘The ECJ decision in this case means that poor consumers are the losers.’  He continued, ‘only the poor would dream of buying [Bellure] products.  The real thing is beyond their wildest dreams.  Yet they are denied their right to receive information which would give them a little bit of pleasure; the ability to buy a product for a euro or so which they know smells like a famous perfume.’

Another reason he questioned the ruling was due to the anti-competitive nature and its potential to hinder an ability to compete honestly.  ‘If a trader cannot (when it is truly the case) say: ‘my goods are the same as Brand X (a famous registered mark) but half the price,’ I think there is a real danger that important areas of trade will not be open to proper competition.’

What remains is for the court to determine damages, and yet, what will linger is the clear expression found in the case in taking unfair advantage of another’s trademark.  Not only does this clear expression now allow for trademark holders to have stronger powers to defend against 'free riding' competitors, but moreover, this ruling may change the way that lawful copy cat products are promoted in their respective markets.

The case is available at the following websites; http://www.bailii.org/ew/cases/EWCA/Civ/2010/535.html and http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=EN&Submit=rechercher&numaff=C-487/07