Journal of Intellectual Property Law & Practice Advance Access originally published online on July 8, 2008
Journal of Intellectual Property Law & Practice 2008 3(8):511-520; doi:10.1093/jiplp/jpn103
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© The Author (2008). Published by Oxford University Press. All rights reserved
The genie in the bottle: brand ‘free riding’: what's permissible and what's not?
Legal context: The Court of Appeal examines the boundaries of when the use of a trade mark amounts to infringing use within the meaning of Articles 5(1) and 5(2) of the Trade Marks Directive; issues of descriptive use, comparative and misleading advertising and what amounts to taking ‘unfair advantage’ of a registered trade mark or use not ‘in accordance with honest practices’. The Court refers various questions to the European Court of Justice.
Key points: L'Oreal complains certain imitation perfumes infringe its trade marks as well as amount to ‘passing off’ of the famous brands and unfair competition. The Court of Appeal dismisses the ‘passing off’ claim, refuses to extend that tort to a broader one of ‘unfair competition’ which is a matter for the legislature and refers various questions to the ECJ on the interpretation of Article 5(2) while suggesting that the packaging of the imitation perfumes of the defendants should, in its view, be permissible, as should use of the trade marks in comparison lists.
Practical significance: It remains to be seen how the ECJ will answer the questions referred so far, and now brand owners are in a state of suspense as to what imitations of their brands they can try to prevent. Equally, those looking to wink an eye at a brand should remain cautious until the law has been clarified. If the ECJ follows the Court of Appeal, then imitators will receive considerable encouragement to ‘free ride’ off famous brands.
Key Words: This article discusses the recent examination of ‘free riding’ in the Court of Appeal decision in L'Oréal S.A. (and others) v Bellure N.V. (and others). • The spectrum of ‘free riding’ on the reputation of a well-known brand ranges from counterfeiting to fair comparative advertising and the activities in between. • In the leading judgment, Lord Jacob set out his view as to when free riding should be permissible and this article examines those views with reference to other relevant case law and European developments.
* Partner, Stephenson Harwood, London, UK. Email: lucy.harrold{at}shlegal.com