## Facts

- L’Oréal owned UK/EU trade marks for luxury perfumes, including word marks (e.g., TRESOR, MIRACLE, NOA, ANAIS-ANAIS) and certain bottle/packaging marks.
- Bellure sold low-priced “smell-alike” perfumes designed to resemble L’Oréal fragrances.
- Bellure used “comparison lists” identifying which Bellure product corresponded to which L’Oréal perfume and conveying that the products smelled alike.
- The trial judge found that consumers were not deceived, there was no likelihood of confusion, no impairment of distinctiveness or reputation was shown, and no loss of sales was proven; L’Oréal’s complaint centered on “unfair advantage” (free-riding) from its marks’ reputation.
- The matter returned to the Court of Appeal after a binding ruling from the Court of Justice of the European Union interpreting the relevant EU directives.

## Issues

1. Whether use of reputed trade marks in truthful comparison lists can constitute trade mark infringement by taking “unfair advantage,” even without confusion, dilution/tarnishment, or proven economic loss.
2. Whether comparative advertising that presents goods as “imitations” or “replicas” of trade-marked goods is unlawful even if non-misleading.
3. Whether certain “look-alike” packaging elements can infringe registered non-word marks by taking unfair advantage of their reputation absent confusion.

## Decision

- The Court of Appeal held that Bellure’s use of L’Oréal’s marks in the comparison lists infringed because it took unfair advantage of the marks’ reputation.
- The Court of Appeal held the comparative advertising was unlawful where it presented Bellure’s products as imitations/replicas of the trade-marked perfumes.
- The Court of Appeal held that aspects of Bellure’s packaging also infringed certain registered marks by taking unfair advantage, notwithstanding the absence of confusion.
- The court noted it was bound by the CJEU’s interpretation and applied that interpretation to find liability.

## Legal Principles

- For a mark with a reputation, infringement based on “unfair advantage” is not conditioned on likelihood of confusion or proof of detriment to distinctiveness, reputation, or sales.
- “Free-riding” occurs where a party uses a similar sign to benefit from the mark’s power of attraction, prestige, and marketing investment without equivalent effort or compensation; that benefit can be “unfair advantage.”
- Comparative advertising that presents goods or services as imitations or replicas of goods/services bearing a protected trade mark fails the conditions for lawful comparative advertising and constitutes unfair advantage.
- Truthful, non-misleading references to a reputed mark can still be actionable if structured to exploit the mark’s reputation rather than merely to identify competing goods.

## Conclusion

The Court of Appeal, applying binding EU-law interpretations, treated “free-riding” on a reputed mark as sufficient for infringement without confusion or proven harm and held that advertising positioning goods as replicas/imitations is unlawful comparative advertising, extending protection for reputed marks against smell-alike marketing and related get-up.


L'Oréal SA v. Bellure NV, [2010] EWCA (Civ) 535 (Eng.)