L'Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd and Starion International Ltd.
Date: 2009-06-18
33. As a preliminary point, it should be noted that the legal and factual context falls to be determined by the referring court and, accordingly, that it is not for the Court of Justice to call into question findings of a factual nature (see, to that effect, Case C-153/02 Neri [2003] ECR I-13555, paragraphs 34 and 35, and Case C-347/06 ASM Brescia  [2008] ECR I-0000, paragraph 28). It follows that the Court is bound by the approach to the facts adopted by the referring court, even if, as the United Kingdom Government and the French Government have argued, it may appear prima facie unlikely that use by a third party of a sign similar to a trade mark, in order to market goods which imitate those for which that mark was registered, will benefit the marketing of the goods of that third party without such use concomitantly causing harm to the image or the marketing of the goods bearing that mark.
34. Article 5(2) of Directive 89/104 establishes, for the benefit of trade marks with a reputation, a wider form of protection than that laid down in Article 5(1). The specific condition of that protection consists of a use without due cause of a sign identical with or similar to a registered mark which takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark (see, to that effect, Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 36; Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraph 27; and Case C-102/07 adidas and adidas Benelux [2008] ECR I-2439, paragraph 40; together with, as regards Article 4(4)(a) of Directive 89/104, Case C-252/07 Intel Corporation [2008] ECR I-0000, paragraph 26).
35. In addition, the Court has stated that Article 5(2) of Directive 89/104 also applies in relation to goods and services identical with or similar to those in respect of which the mark was registered (see, to that effect, Case C‑292/00 Davidoff [2003] ECR I‑389, paragraph 30; Adidas-Salomon and Adidas Benelux , paragraphs 18 to 22; and adidas and adidas Benelux , paragraph 37).
36. The infringements referred to in Article 5(2) of Directive 89/104, where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them without confusing them. It is thus not necessary that the degree of similarity between the mark with a reputation and the sign used by the third party is such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark (see Adidas-Salomon and Adidas Benelux , paragraphs 29 and 31, and adidas and adidas Benelux , paragraph 41).
37. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade marks with a reputation (see, to that effect, Intel Corporation , paragraphs 31 and 32).
38. Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation , paragraph 27).
39. As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation , paragraph 29).
40. As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.
41. As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation , paragraph 28).
44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation , paragraphs 67 to 69).
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
52. It should be noted at the outset that comparison lists such as those at issue in the main proceedings may constitute comparative advertising. Article 2(1) of Directive 84/450 provides that ‘advertising’ comprises the making of a representation in any form in connection with a trade, business, craft or profession in order to promote the supply of goods or services. Article 2(2a) states that such advertising falls to be treated as comparative where, explicitly or by implication, it identifies a competitor or goods or services offered by a competitor. Those particularly broad definitions mean that the forms which comparative advertising may take are very varied (see, to that effect, Case C-112/99 Toshiba Europe  [2001] ECR I-7945, paragraphs 28 and 31; Case C-44/01 Pippig Augenoptik  [2003] ECR I-3095, paragraph 35; Case C-381/05 De Landtsheer Emmanuel  [2007] ECR I-3115, paragraph 16; and Case C-533/06 O2 Holdings and O2 (UK) [2008] ECR I-4231, paragraph 42).
53. Moreover, the Court has already held that the use by an advertiser, in a comparative advertisement, of a sign identical with or similar to the mark of a competitor for the purposes of identifying the goods or services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104. Such use may therefore be prevented, where appropriate, by virtue of those provisions (see O2 Holdings and O2 (UK) , paragraphs 36 and 37).
57. The first sentence of Article 5(1) of Directive 89/104 provides that the registered trade mark is to confer on the proprietor exclusive rights therein. By virtue of Article 5(1)(a) of that directive, those exclusive rights entitle the proprietor to prevent all third parties not having his consent from using, in the course of trade, any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.
58. The Court has already held that the exclusive right under Article 5(1)(a) of Directive 89/104 was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark (Case C-206/01 Arsenal Football Club [2002] ECR I‑10273, paragraph 51; Case C‑245/02 Anheuser‑Busch [2004] ECR I‑10989, paragraph 59; and Case C-48/05 Adam Opel [2007] ECR I-1017, paragraph 21). These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising.
59. The protection conferred by Article 5(1)(a) of Directive 89/104 is thus broader than that provided by Article 5(1)(b), the application of which requires that there be a likelihood of confusion and accordingly the possibility that the essential function of the mark may be affected (see, to that effect, Davidoff , paragraph 28, and O2 Holdings and O2 (UK) , paragraph 57). By virtue of the 10th recital in the preamble to Directive 89/104, the protection afforded by the registered trade mark is absolute in the case of identity between the mark and the sign and also between the goods or services, whereas, in case of similarity between the mark and the sign and between the goods or services, the likelihood of confusion constitutes the specific condition for such protection.
60. It is apparent from the case-law cited in paragraph 58 of this judgment that the proprietor of the mark cannot oppose the use of a sign identical with the mark on the basis of Article 5(1)(a) of Directive 89/104 if that use is not liable to cause detriment to any of the functions of that mark (see also Arsenal Football Club , paragraph 54, and Adam Opel , paragraph 22).
61. Thus, the Court has already held that certain uses for purely descriptive purposes are excluded from the scope of application of Article 5(1) of Directive 89/104, because they do not affect any of the interests which that provision is intended to protect and accordingly do not constitute ‘use’ within the meaning of that provision (see, to that effect, Case C-2/00 Hölterhoff  [2002] ECR I-4187, paragraph 16).
63. It is for the referring court to determine whether, in a situation such as that which arises in the main proceedings, the use which is made of the marks belonging to L’Oréal and Others is liable to affect one of the functions of those marks, such as, in particular, their functions of communication, investment or advertising.
65. In the light of the above considerations, the answer to the first and second questions is that Article 5(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of a registered trade mark is entitled to prevent the use by a third party, in a comparative advertisement which does not satisfy all the conditions, laid down in Article 3a(1) of Directive 84/450, under which comparative advertising is permitted, of a sign identical with that mark in relation to goods or services which are identical with those for which that mark was registered, even where such use is not capable of jeopardising the essential function of the mark, which is to indicate the origin of the goods or services, provided that such use affects or is liable to affect one of the other functions of the mark.
The third and fourth questions
67. Article 3a(1)(a) to (h) of Directive 84/450 lists cumulative conditions which comparative advertising must satisfy in order to be permitted.
68. The purpose of those conditions is to achieve a balance between the different interests which may be affected by allowing comparative advertising. Thus, it is apparent from a reading of recitals 2, 7 and 9 in the preamble to to Directive 97/55 that the aim of Article 3a is to stimulate competition between suppliers of goods and services to the consumer’s advantage, by allowing competitors to highlight objectively the merits of the various comparable products while, at the same time, prohibiting practices which may distort competition, be detrimental to competitors and have an adverse effect on consumer choice.
69. It follows that the conditions listed in Article 3a(1) must be interpreted in the sense most favourable to permitting advertisements which objectively compare the characteristics of goods or services (see, to that effect, De Landtsheer Emmanuel , paragraph 35 and the case-law cited), while ensuring at the same time that comparative advertising is not used anti-competitively and unfairly or in a manner which affects the interests of consumers.
72. It follows that the use of a competitor’s trade mark in comparative advertising is permitted by Community law where the comparison objectively highlights differences and the object or effect of such highlighting is not to give rise to situations of unfair competition, such as those described inter alia in Article 3a(1)(d), (e), (g) and (h) of Directive 84/450 (see, to that effect, Pippig Augenoptik , paragraph 49).