Journal of Intellectual Property Law & Practice Advance Access originally published online on August 8, 2007
Journal of Intellectual Property Law & Practice 2007 2(9):619-622; doi:10.1093/jiplp/jpm134
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© The Author (2007). Published by Oxford University Press. All rights reserved
Dishonestly and without due cause
Legal context: UK trade mark law was harmonised with the laws of other EU member states pursuant to the Trade Marks Directive (89/104/EEC) with the coming into force of the Trade Marks Act 1994. Since then, the English courts have sought to absorb into English jurisprudence continental concepts of unfair competition, and a new code relating to the use of another's trade mark in comparative advertising. Traditionally, the English approach has been more liberal and less protective of a trade mark owner's rights than that of continental jurisdictions, but since 1994 the ECJ has been called upon to provide frequent guidance on the interpretation of expressions such as the "essential function" of a trade mark and the "duty to act fairly" in relation to the legitimate interests of the trade mark proprietor.
Key points: This article examines the way in which some recent decisions of the ECJ have led to the English courts having greater regard to the property interests of the trade mark owner and less regard to the concepts of free market competition and consumer protection. In the recent High Court case of L'Oréal and others v Bellure NV and others, Lewison J made findings of infringement under s.10(1) and (3) Trade Marks Act 1994 where he found that there was "free riding" on the back of the reputation of certain of L'Oreal's trade marks without there being any evidence of confusion or association between the trade marks and the defendants' signs.
Practical significance: For trade mark owners, this change in the approach of the English courts opens up new opportunities to combat look-alike products and comparative advertisements which take unfair advantage of the reputation of established marks.
Key Words: European trade mark law is based on the premise, among others, that even a commercial use of another’s trade mark will be permitted if it can be said to be honest and in keeping with normal industrial or commercial practice. • UK law and practice on this point has attracted much attention, partly on account of the easy accessibility of reports on some instructive, entertaining and fiercely contested disputes and partly because section 10(6) of that jurisdiction’s Trade Marks Act 1994, which enshrines that premise, does so in a manner that is not mandated by the harmonized European law. • This article reviews the interplay between British and European Court of Justice case law, in the light of some robust marketing and advertising practices and equally robust expressions of judicial displeasure with the state of the law.
* Addleshaw Goddard (NOTE: the author represented the defendants in L’Oréal, referred to below).