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The Implications of L’Oréal v 

Bellure—A Retrospective and a 

Looking Forward: The Essential 

Functions of a Trade Mark and 

when is an Advantage Unfair? 

By 

Audrey Horton 

Reprinted from E.I.P.R. 

Issue 9, 2011 

Sweet & Maxwell 

100 Avenue Road 

Swiss Cottage 

London 

NW3 3PF 

(Law Publishers)

550 European Intellectual Property Review 

The Implications of 

L’Oréal v Bellure—A 

Retrospective and a 

Looking Forward: The 

Essential Functions of 

a Trade Mark and 

when is an Advantage 

Unfair? 

Audrey Horton * 

Bird & Bird LLP 

Comparative advertising; Essential function; EU law; 

Infringement; Trade marks; Unfair advantage 

This article reviews the judgment of the CJEU in L’Oréal 

v Bellure, and its application by the English Court of 

Appeal in L’Oréal itself and subsequent cases. The 

relevance of “intention” to take advantage of a famous 

mark is considered and general proposals for the future 

development of the law are drawn. The impact of the 

doctrine of the “essential functions” of a trade mark is 

considered in the light of L’Oréal, comments made by the 

Advocate General in his Opinion in Interflora v Marks 

& Spencer and the recently published Max Planck 

Institute’s Study on the European Trade Mark System. 

Background 

This article reviews the guidance of the Court of Justice 

of the European Union (CJEU) in L’Oréal v Bellure NV 

(C-487/07) in its judgment of June 18, 2009 1 and 

considers the application of that guidance by the English 

Court of Appeal in the L’Oréal case itself, 2 by the English 

Court of Appeal in Whirlpool Corp v Kenwood Ltd, 3 and 

the English High Court in Daimler AG v Sany Group Co 

Ltd 4 and Specsavers International Healthcare Ltd v Asda 

Stores Ltd. 5 The criticisms of the CJEU judgment by the 

English Court of Appeal in the L’Oréal v Bellure case 

are reviewed in a wider context, and in the light of the 

application of the judgment in subsequent cases. The 

relevance of intention to take advantage of the famous 

mark is considered. Finally a particular fact scenario in 

the entertainment field is considered in the light of the 

L’Oréal v Bellure principles, and some general proposals 

* The author would like to thank Trevor Cook of Bird & Bird LLP for kindly reading and commenting on this article. 

1 L’Oréal v Bellure NV (C-487/07) [2009] E.C.R. I-5185. 

2 L’Oréal v Bellure NV [2020] EWCA Civ 535; [2010] E.T.M.R. 47. 

3 Whirlpool Corp v Kenwood Ltd [2010] R.P.C. 2 CA (Civ Div). 

4 Daimler AG v Sany Group Co Ltd [2009] EWHC 2581 (Ch). 

5 Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch); [2011] F.S.R. 1. 

6 Interflora v Marks & Spencer Plc (C-323/09) Opinion March 24, 2011. 

for the future development of the law including further 

referrals to the CJEU, in this area are drawn. In particular 

the impact of the doctrine of the “essential functions” of 

a trade mark is considered in the light of the L’Oréal v 

Bellure case, and comments made by the Advocate 

General in his Opinion in Interflora v Marks & Spencer 

Plc (C-323/09) 6 of March 24, 2011, and in the Study on 

the Overall Functioning of the European Trade Mark 

System by the Max Planck Institute (the Max Planck 

Study) of February 15, 2011. 

L’Oréal v Bellure: the judgment of the 

CJEU 

The L’Oréal case concerned so-called “smell-alike” or 

imitation perfumes and the use of well-known registered 

marks (TRESOR, MIRACLE, NOA and ANAIS-ANAIS) 

in price and smell comparison charts. The first issue 

referred to the CJEU concerned whether the use of 

registered word marks in the comparison lists fell within 

art.5(1)(a) of the Trade Marks Directive/art.9(1)(a) of the 

Trade Marks Regulation (2009/207) (identical marks and 

identical goods). The CFEU was asked whether the use 

of a registered trade mark on a comparison list for the 

purposes of indicating the characteristics, in particular 

the smell of the goods, in such a way that it did not cause 

any likelihood of confusion, did not affect sales under 

the well-known mark, did not jeopardise the essential 

function of the trade mark as a guarantee of origin, and 

did not tarnish or blur the registered trade mark, but 

played a significant role in the promotion of the product, 

could constitute infringement under art.5(1)(a)/art.9(1)(a). 

The CFEU held that an effect on any of the functions of 

the trade mark, such as the guarantee of quality of the 

goods or services, and those of communication, 

investment or advertising, and not just the origin function, 

is sufficient to sustain a claim under art.5(1)(a)/art.9(1)(a). 

The case also involved infringement under 

art.5(2)/art.9(1)(c) of L’Oréal’s registered marks for bottle 

shapes and packaging in respect of the defendant’s 

look-alike packaging (which did not incorporate L’Oréal’s 

word marks). Trade mark infringement occurs under 

art.5(2)/art.9(1)(c) where there is unauthorised use of a 

Community trade mark “which has a reputation in the 

Community”, in relation to identical, similar or 

non-similar goods and services, and where use of the sign 

“without due cause takes unfair advantage of, or is 

detrimental to, the distinctive character or repute of the 

Community trade mark”. 

The defendants were using the registered trade marks 

for the purposes of comparing the characteristics, in 

particular the smell of the goods, in such a way that it did 

not cause confusion, did not impair sales under the 

[2011] E.I.P.R., Issue 9 © 2011 Thomson Reuters (Professional) UK Limited and Contributors

well-known mark, did not jeopardise the essential function 

of the trade mark as a guarantee of origin, and did not 

tarnish or blur the registered trade mark. The question 

was whether this could still amount to the taking of “an 

unfair advantage”. The CJEU judgment similarly decided 

in relation to art.5(2)/art.9(1)(c) also that a trade mark 

owner can prevent use not only where the essential 

function (namely the guarantee of origin) of the mark is 

jeopardised but also where any of the mark’s other 

functions are affected, such as the guarantee of quality 

of the goods or services, and those of communication, 

investment or advertising. 

The CJEU decision clarified that it is not necessary to 

show all three types of injury to infringe the trade mark; 

any one will suffice. It follows that there can be a finding 

that unfair advantage has been taken of the repute of a 

registered mark under art.5(2)/art.9(1)(c) without the need 

to show any detriment to the distinctive character 

(dilution) or detriment to the repute of the registered mark 

(tarnishment). All the usual factors, including the 

likelihood of confusion, dilution or tarnishment, will be 

taken into account as part of a global assessment, but 

none of these are necessary ingredients for an unfair 

advantage to be found. 

The CJEU also held that: 

“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 its 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.” 7 

A pre-condition to establishing infringement under 

art.5(2)/art.9(1)(c) is that the relevant public must make 

a connection between the allegedly infringing sign and 

the registered mark, or establish a “link” between them, 

which results from the similarity between the mark and 

the sign. In the L’Oréal case the defendants’ own 

witnesses had said that the perfume packaging was 

designed to give “a wink of an eye” towards the original 

perfumes. There was no confusion: the public knew that 

the look-alike perfumes were not the real thing and had 

no trade connection with L’Oréal but the “link” that was 

made enabled the defendants to charge higher prices and 

helped them to market their products. 

The focus in L’Oréal was on the commercial advantage 

obtained by the defendants rather than damage to the trade 

mark owner’s business. Even if no one is confused and 

there is no harm, the competitor may have still benefited 

from the investment which has gone into creating the 

7 L’Oréal v Bellure NV (C-487/07) [2009] E.C.R. I-5185 at [49]. 

The Implications of L’Oréal v Bellure—A Retrospective and a Looking Forward 551 

iconic status or cachet of the well-known brand. All the 

trade mark owner need show is that the defendant has 

obtained a commercial advantage from the reputation of 

his mark by establishing a link with the well-known mark 

through use of an identical or similar sign. 

Such a form of trade mark infringement is broadly 

comparable to the continental concept of unfair 

competition or “parasitical trading” and, at least for the 

particular circumstances of this case involving 

well-known marks used on look-alike or imitation 

products, goes well beyond what would be protected by 

common law passing off in the United Kingdom. 

The English Court of Appeal applies the 

CJEU judgment to the facts of 

L’Oréal v Bellure 

Following the CJEU decision the Court of Appeal, in a 

judgment given by Jacob L.J., in L’Oréal v Bellure, 

reluctantly held that trade mark infringement had indeed 

occurred. Lord Justice Jacob however made it clear that, 

if he were free from the opinion of the CJEU, his strong 

predilection would be to hold that trade mark law should 

not prevent the defendants from telling the truth, namely 

that their smell-alike perfumes, which in themselves were 

not unlawful, smelled like the corresponding famous 

brands. He prayed in aid principles of freedom of speech 

and freedom of expression. He also referred to the right 

of freedom to trade, and potentially in other cases (since 

the parties were not in competition with each other in this 

case) to compete honestly. He considered that such 

competition would be distorted if, for example, traders 

were not allowed to state truthfully that their goods were 

the same as brand X (a famous registered trade mark), 

but half the price. In his view, preventing comparison 

lists which necessarily refer to well-known brands, such 

as lists of generic versions of branded drugs or equivalent 

printer cartridges and the like, clearly distorts what may 

be proper or lawful competition. 

Specifically, Jacob L.J. said he regretted that the CJEU 

“has not addressed the competition aspects of what it calls 

‘riding on the coat-tails’”. This raises some interesting 

questions about where the line should be drawn between 

what the judge thought of as permissible and 

impermissible “free-riding”. In Jacob L.J.’s view, there 

may be cases where there is no confusion, where the 

parties are not directly in competition with each other so 

that the activity involved does not impinge on the trade 

of the trade mark owner, but nevertheless the defendant 

may get some benefit from the fame of the mark. As he 

pointed out when he originally referred the question to 

the CJEU, that sort of case may or may not involve some 

adverse effect on the fame, distinctiveness or repute of 

the trade mark. In other words the fact of benefit to the 

defendant does not necessarily cause harm to the trade 

mark owner. The CJEU decided that benefit (the “unfair 

advantage” element) is enough; you don’t also have to 



show harm (detriment to distinctive character or repute). 

The L’Oréal v Bellure decision by the CJEU thus focuses 

on the benefit gained by the defendant rather than on any 

direct harm caused to the trade mark owner. 

In Jacob L.J.’s view the pendulum has swung too far 

towards the interests of the trade mark owner, away from 

what is required for the protection of the consumer (since 

he is not deceived or confused) and in doing so fails to 

protect the consumer’s interest in free competition. 

Where the line should be drawn has been much 

debated 8 and remains controversial. As Jacob L.J. pointed 

out the famous brand has lost no sales from poor 

consumers of “smell-alikes” who cannot afford the real 

thing which is “beyond their wildest dreams”. In the 

particular fact pattern of this case it is also hard to see 

how the defendants could have got their “smell-alike” 

message across without referring to the famous brands. 

If a trader may refer to a famous trade mark in order to 

describe spare parts that are suitable for use with products 

sold under that famous mark, why was the use by the 

smell-alike defendants not also legitimate descriptive 

use? The CJEU’s answer is that the use is not “for purely 

descriptive purposes”: its use may affect the 

communication, advertising and investment functions of 

the mark, concepts Jacob L.J. considered to be 

conceptually “vague and ill-defined”. 

Concern has also been expressed by the European 

Commission about the vagueness of the scope and 

applicability of the “other functions” of trade marks (other 

that is than the essential one of guaranteeing origin). The 

written observations of the Commission in the reference 

to the CFEU in Interflora v Marks & Spencer, which are 

not publicly available but were referred to in the judgment 

of Arnold J. of the English High Court in that case on 

April 29, 2010, 9 also expressed concern that the existing 

jurisprudence of the CJEU including specifically L’Oréal 

v Bellure “might not have defined the precise scope of 

the exclusive rights of trade mark proprietors with the 

required degree of clarity” and suggested that the CFEU 

should take the opportunity presented by the reference to 

clarify these issues, including reconsidering its judgment 

in L’Oréal v Bellure. 

In the meantime the English courts have applied or 

considered the CJEU guidelines in L’Oréal v Bellure in 

the following cases. 

The requirement of intention to take an 

advantage: 

Whirlpool Corp v Kenwood Ltd 

In a case involving shape marks for kitchen mixers, the 

English Court of Appeal in Whirlpool Corp v Kenwood 

Ltd 10 found that there was no unfair advantage. Whirlpool 

had failed to prove that consumers were misled by the 

appearance of Kenwood’s kMix product into believing 

that it was Whirlpool’s KitchenAid Artisan mixer and, 

since there was no likelihood of confusion, it relied on 

the extended form of protection under art.9(1)(c). 

Although the kMix would remind people of the Artisan, 

so that the necessary “link” existed, Whirlpool failed to 

draw an analogy with the facts of the L’Oréal v Bellure 

case. Kenwood had its own existing reputation and did 

not need to ride on Whirlpool’s coat-tails. There was also 

no evidence of intent to do so. Even if a commercial 

advantage had been obtained as a result of the perceived 

similarity between the shapes of the mixer, there was no 

evidence that this was unfair. Although it might be 

possible for something other than intention to turn an 

advantage into an unfair one, no other factor had been 

identified. 

Daimler AG v Sany Group Co Ltd 11 

In this case Daimler claimed inter alia that Sany’s logo 

used on construction machinery would call to mind the 

Mercedes star and thereby incite consumer interest in 

Sany’s goods by imbuing them with allure and prestige. 

As a result Daimler claimed that Sany had obtained an 

unfair advantage under art.5(2). The trial judge failed to 

find the necessary link: in her view the Sany mark would 

not call to mind the Mercedes star, but she also held that, 

if she had found such a link, there was no evidence of 

any “leg up” being achieved as a result of any similarity 

between the marks. Crucially, given that Sany’s logo had 

been innocently adopted and promoted as its house mark 

in China many years previously, there was no evidence 

of intent. This fact scenario contrasts with that in the next 

case considered below. 

Specsavers v Asda Stores 12 

In this case the English High Court held that the use by 

Asda Stores of the strapline “Be a real spec saver at Asda” 

infringed Specsavers’ Community trade marks for the 

word mark “SPECSAVERS” under art.9(1)(c) of the 

Regulation on the basis of an intention to take advantage 

of the mark. 13 

8 

C. Morcom QC, “L’Oréal v Bellure—Who Has Won?” [2009] E.I.P.R. 627; C. Morcom QC, “L’Oréal v Bellure—The Court of Appeal Reluctantly Applies the ECJ ruling: 

L’Oréal SA v Bellure NV” [2010] E.I.P.R. 530; D. Meale and J. Smith, “Enforcing a trade mark when nobody’s confused: where the law stands after L’Oréal and Intel” 

(2010) 5(2) Journal of Intellectual Property Law & Practice 96; M. Björkenfeldt, “The genie is out of the bottle; the ECJ’s decision in L’Oréal v Bellure” (2010) 5(2) 

Journal of Intellectual Property Law & Practice 105. 

9 

Interflora v Marks & Spencer [2010] EWHC 925 (Ch). 

10 

Whirlpool [2010] R.P.C. 2. 

11 

Daimler v Sany [2009] EWHC 2581 (Ch). The author’s firm represented Sany Group Co in this matter. 

12 

Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch); [2011] F.S.R. 1. 

13 

Specsavers failed to establish trade mark infringement of their logo marks featuring two overlapping ovals (with and without the word “Specsavers”) under art.9(1)(b) 

which requires a likelihood of confusion or a likelihood of association, arising from Asda Stores’ use of a logo in the form of two non-overlapping ovals bearing the words 

“ASDA Opticians”. Specsavers’ claim in passing off also failed. 


The evidence in the case showed that in relation to the 

logo Asda Stores had started with Specsavers’ mark and 

moved away (rather than happening to devise a mark 

which turned out to be close to Specsavers’ mark). Their 

legal department had advised them not to adopt a logo 

with overlapping ovals, and suggested a reversal of 

colours which would help to achieve a safe distance. As 

regards the straplines the reference to Specsavers was 

intentional because the intention was to parody and, as 

the judge observed, you cannot parody something unless 

your material contains a reference to what you are 

parodying. The judge also found on the evidence that 

Asda Stores intended in their overall campaign, by the 

use of the strapline, to import a reference to Specsavers 

in relation to three “pillars” of the brand, namely price, 

range and professionalism. 

Mr Justice Mann referred to the guidance from the 

CJEU in L’Oréal v Bellure and extracted the following 

guidelines: 

• Assessing whether there has been an unfair 

advantage requires a global assessment of 

all relevant circumstances; 

• The advantage taken will be unfair if the 

use amounts to riding on the coat-tails of 

the mark, by which is apparently meant “a 

use which uses the mark and its inbuilt 

reputation to create or enhance the 

reputation of the infringing product”; 

• It is relevant to the assessment that the 

offending sign was created deliberately in 

order to create an association in the mind 

of the public (the required “link” between 

the registered mark and the offending sign). 

He then referred to the Court of Appeal decision in 

Whirlpool Corp v Kenwood Ltd, concluding that 

something more than a mere advantage is required; the 

advantage must also be unfair and the advantage will be 

rendered unfair if it is intended. The unfairness of the 

advantage can be demonstrated by something other than 

intention, but intention was the factor that was shown in 

L’Oréal and not present in Whirlpool v Kenwood. 

In the Specsavers case Mann J. found the relevant 

“link” had been established: the whole purpose of the 

play on words in the strapline “Be a real spec saver at 

Asda” was to call to mind Specsavers and its word mark. 

He also found that the use of “spec savers” gave Asda an 

advantage in that “it was, at the very least, a reference 

point for its intended message—you will get a better deal 

at Asda than at Specsavers” and thus it was “clearly 

referencing people’s knowledge of Specsavers and its 

reputation for value”. The judge also considered that the 

strapline did more than that because, although focusing 

on value, it was also referencing the brand in a wider way. 

By bringing to mind Specsavers, a brand with a 

reputation, which was Asda’s intention, inevitably and 

predictably other aspects of the Specsavers’ brand (other 


than value), namely range and professionalism, were also 

called to mind. It followed that there was an unfair 

advantage within the meaning of art.9(1)(c). Specsavers 

had an established reputation for value and Asda sought 

to draw on the value of the inbuilt reputation already 

established by the Specsavers brand. Since Asda intended 

to do that, the ingredient of intention made the advantage 

unfair. Even if Asda did not intend to convey parity or 

superiority with the other two pillars of range and 

professionalism, it nonetheless intended to use the brand 

as a brand, with all that brings, and that too was enough 

to make the advantage unfair. 

The case also demonstrates that an unfair advantage 

can be taken where there are two companies with big 

reputations: Asda had its own reputation for value and 

price. The facts of L’Oréal, where an unknown brand 

sought a marketing advantage by packaging which 

suggested a luxury brand, were held not to be the only 

facts which could give rise to an unfair advantage. Asda 

had argued that they had no need to ride on the coat-tails 

(or as the judge preferred “stand on the shoulders”) of 

Specsavers. Since Asda had an existing reputation as a 

provider of value, it argued that it could not be getting an 

unfair advantage by a statement about value. The judge 

rejected this logic: the question was whether the use of 

the mark was fair. This was not a case of an objectively 

provable comparison merely identifying a competitor, 

but an intention to suggest the qualities inherent in the 

competitor’s brand and thereby to reference the 

competitor’s reputation by using its mark. As such it was 

capable of being an unfair advantage. 

Chippendales v Superstar 14 

This case, which settled before trial, illustrates a situation 

of double identity (identical marks/signs and identical 

services) and involved the use of a well-known mark. 

The claimant was the well-known male dance troupe 

known as “the Chippendales” and is the proprietor of 

Community and UK trade mark registrations for the word 

mark CHIPPENDALES, registered in class 41 for inter 

alia “entertainment services, namely discotheque, male 

dance-exhibitions …”. 

Superstar Entertainment set up a male dance group 

modelled on the Chippendales dance troupes. The group, 

“Here Come the Boys”, included a number of individuals 

who had many years previously been Chippendales 

dancers, but it had no connection in the course of trade 

with any Chippendales dance troupe. When promoting 

and advertising the Here Come the Boys’ UK tour 

Superstar repeatedly used the name CHIPPENDALES, 

and inter alia distributed a flyer to theatre venues and 

ticket agents referring to Here Come the Boys as “The 

Original Chippendales”. 

As a result of Superstar’s various uses of the 

CHIPPENDALES name, journalists and photographers 

were confused into believing that the male dance group 

14 Chippendales USA LLC v Superstar Entertainment Ltd. The author’s firm, Bird & Bird LLP, represented the Chippendales USA LLC in this matter. 



Here Come The Boys and its forthcoming tour either were 

the Chippendales, or were somehow connected in the 

course of trade with, the Chippendales or the 

Chippendales’ business. For example references appeared 

in the press and other media such as “The Chippendales 

are back” or describing the Here Come the Boys dance 

group as being “re-united” and “re-branded”. 

The Chippendales alleged infringement under 

art.9(1)(a), 9(1)(b) and 9(1)(c). In relation to art.9(1)(c), 

before launching its business, Superstar had no reputation 

or goodwill in relation to men’s dance shows. The 

Chippendales alleged that, had Superstar launched its 

business without using the CHIPPENDALES name, it 

would have had to spend a great deal more time, effort 

and money on promoting and advertising its business to 

bring it to the attention of its target customers and for 

example to secure bookings at theatre venues. By relying 

on the Chippendales’ reputation and goodwill in the 

Chippendales’ business, it was alleged that Superstar had 

attracted the Chippendales’ customers and potential 

customers to itself, thereby taking unfair advantage of 

the reputation and distinctiveness of the 

CHIPPENDALES trade mark. 

An interesting aspect of this case is that it is possible 

that not all the customers and potential customers of the 

group Here Come the Boys were necessarily confused in 

that they may have been (or become) aware that the group, 

although containing former Chippendales, was not, and 

was not connected to, the presently performing 

Chippendales. However, the motivation of the audience 

to attend the performance by Here Come The Boys would 

in most if not all cases have been primarily because of 

the link with the iconic brand the Chippendales who 

alleged that Superstar intended to use the Chippendales 

name to take advantage of the famous brand name. In 

line with the Whirlpool and Specsavers cases, such 

intention would make the advantage unfair. 

Like the L’Oréal case itself this case also raises 

questions of legitimate descriptive use in the light of the 

former Chippendales performers, although, following the 

CJEU’s reasoning, the use of the mark was as in L’Oréal 

not for purely descriptive purposes, but use which might 

affect the communication, investment and advertising 

functions of the mark. 

How should European trade mark law 

develop? 

In the United Kingdom art.5(2)/9(1)(c) was originally 

implemented into law in such a way as to preclude 

protection under that heading for identical or similar 

goods. Thus the three categories of infringement 

corresponding to art.9(1)(a), 9(1)(b) and 9(1)(c) did not 

involve an overlap. Article 9(1)(a) dealt with cases of 

“double identity” (identical signs and identical goods/ 

services). In such a case infringement may be established 

15 Adidas Salomon v Fitnessworld (C-408/01) [2003] E.C.R. I-12537; [2004] 1 C.M.L.R. 14. 

16 Davidoff & Cie v Gofkid Ltd (C-292/00) [2003] E.C.R. I-389; [2003] E.T.M.R. 42. 

17 Baywatch Productions Co Inc v The Home Video Channel [1997] F.S.R. 22 Ch D. 

without the need to show confusion or a likelihood of 

confusion (although such confusion will be the inevitable 

result in most cases where use has occurred). Article 

9(1)(b) dealt with identical or similar signs and 

identical/similar goods/services. In such cases 

infringement required a showing of a likelihood of 

confusion or association. Article 9(1)(c) dealt with 

identical/similar signs and dissimilar goods/services, and 

required a trade mark with a reputation in the Community, 

use without due cause and the taking unfair advantage 

of, or detriment to the distinctive character or repute of 

the CTM. As discussed below it was confirmed by the 

CJEU that a likelihood of confusion or association is not 

required under the third category of infringement. 

Following the Opinion of the Advocate General in 

Adidas Salomon v Fitnessworld (C-408/01), 15 followed 

by the ECJ in that case and in Davidoff II, 16 it was held 

that art.5(2)/9(1)(c) could and should equally apply to 

identical or similar goods/services, disregarding the literal 

words of that article. In part this was in response to the 

curtailment of art.5(2) by national courts (such as the 

English High Court in Baywatch Productions Co Inc v 

The Home Video Channel 17 which had held that this form 

of infringement also required confusion), on the reasoning 

that it would be illogical for non-similar goods to be 

accorded greater protection than similar goods by 

dispensing with the ingredient of the likelihood of 

confusion. The ECJ held that the protection accorded by 

art.5(2) to marks with a reputation was not conditional 

on a finding that there existed a likelihood of confusion. 

As a result the United Kingdom also amended its law to 

delete the reference to non-similar goods, thus extending 

the protection of art.5(2)/9(1)(c) to identical and similar 

goods/ services. The Max Planck Study has recommended 

at para.2.197 that art.9(1)(c) should likewise be changed 

to express the principle that protection is granted 

irrespective of whether the sign is used for identical, 

similar or dissimilar goods. 

With hindsight, the extension of art.9(1)(c) to identical 

and similar goods/services can be seen as the reason for 

the current unease about the unclear extent of protection 

accorded by it. The original framework involved 

non-overlapping categories: art.9(1)(b) was to apply to 

similar goods/services where there exists a likelihood of 

confusion, and art.9(1)(c) was intended to apply to 

non-similar goods/services where there is a trade mark 

with a reputation and unfair advantage or detriment to 

distinctive character or repute (but with no need to show 

confusion). In other words if the goods/services were 

identical or similar it should be possible for the trade mark 

owner to establish confusion and there would be no need 

for the type of extended protection accorded under 

art.9(1)(c). If the trade mark owner cannot establish such 

confusion in the case of identical or similar 

goods/services (such that the essential function of the 

trade mark as a guarantee of origin is not liable to be 


affected) it might be said it is going too far to accord such 

marks the kind of anti-dilution protection which was 

originally framed to cover cases where confusion would 

be extremely difficult to show because of the disparity 

of the goods/services involved. The contrary argument 

made is that very well-known marks paradoxically may 

find themselves so well known that it becomes very 

difficult to establish confusion or association, even in the 

case of the use of the mark on identical or similar goods. 

If only dissimilar goods/services were protected by 

art.9(1)(c), L’Oréal v Bellure would have been decided 

under art.9(1)(b) and the absence of confusion would 

have been decisive. Of course the clock cannot be turned 

back and cases such as L’Oréal v Bellure, Specsavers v 

Asda Stores and Chippendales v Superstar Entertainment 

have been, or would have been, decided under the new 

regime when the third category of infringement applies 

to identical, similar and dissimilar goods/services. 

The issue is further complicated by the requirement, 

which is not in the CTM Regulation, nor in the Trade 

Marks Directive, that, in order for there to be trade mark 

infringement, including infringement under art.9(1)(a) 

(double identity cases), the use in question must be liable 

to affect the essential functions of the trade mark, in 

particular its essential function of guaranteeing to 

customers the origin of the goods or services. This 

jurisprudence of “essential functions” stems from the 

cases of Arsenal Football Club v Reed (C-206/01), 18 Adam 

Opel AG v Autec (C-48/05), 19 culminating in what have 

become known as the Céline principles, from Céline Sarl 

v Céline SA (C-17/06), 20 a case of double identity, 

requiring a four-step test for infringement, namely: (1) 

use in the course of trade; (2) no consent from the trade 

mark owner; (3) use in relation to goods and services; 

and (4) the use affects or is liable to affect the functions 

of the trade mark. 

One of the questions referred by Arnold J. to the CFEU 

in Interflora v Marks & Spencer (concerning whether and 

when the use of the registered trade mark as a keyword 

may amount to infringement) is the extent to which 

art.5(1)(a)/9(1)(a) and art.5(2)/9(1)(c) overlap, in 

particular whether art.5(1)(a)/9(1)(a) should be restricted 

to use which affects or is liable to affect the origin 

functions of a mark, whereas use which only affects the 

other functions of a mark, namely guarantee of quality, 

investment, communication and advertising, should only 

be prohibited by art.5(2)/9(1)(c). 

In the L’Oréal v Bellure case the CJEU specifically 

states that the requirement that the third party’s use affects 

or is liable to affect the functions of the trade mark: 

“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, 

18 Arsenal Football Club v Reed (C-206/01) [2002] E.C.R. I- 10273; [2003] E.T.M.R. 19. 

19 Adam Opel AG v Autec (C-48/05) [2007] E.C.R. I-1017; [2007] E.T.M.R. 33. 

20 Céline Sarl v Céline SA (C-17/06) [2007] E.C.R. I- 7041; [2007] E.T.M.R. 80. 

21 L’Oréal v Bellure NV [2009] E.C.R. I-5185 at [58]. 

22 Wagamama Ltd v City Centre Restaurants Plc [1995] F.S.R. 713 Ch D. 

23 Sabel BV v Puma AG (C-251/95) [1998] R.P.C. 199. 


in particular that of guaranteeing the quality of the 

goods or services in question, and those of 

communication, investment or advertising.” 21 

Such wording does not envisage mutually exclusive 

categories, but rather accepts the parallel application of 

art.5(1)(a) and 5(2). 

It seems clear that art.5(1)(b)/9(1)(b) should be 

restricted to use which affects or is liable to affect the 

origin function of a trade mark. At the very outset of the 

current trade mark regime when interpreting “likelihood 

of confusion, including likelihood of association” Laddie 

J. rejected the Benelux concept of “non-origin 

association” in Wagamama Ltd v City Centre Restaurants 

Plc. 22 This was followed by the ECJ in Sabel BV v Puma 

AG (C-251/95) 23 which held that likelihood of confusion 

and likelihood of association were not alternatives. 

“Likelihood of association” in this context meant that the 

concept of “likelihood of confusion” is not limited to 

confusion in the sense that a consumer mistakes one 

product for another, but also other types of confusion, 

such as the mistaken assumption that there is an 

organisational or economic link between two competing 

undertakings. It did not mean that a mere association 

between two trade marks which did not lead to confusion 

sufficed for this particular category of infringement. 

And yet, as a result of L’Oréal v Bellure, non-origin 

association for similar goods has, in the case of marks 

with a reputation, as it were, been brought in via by the 

back door. The CJEU has clearly said that it is not 

necessary to establish that the guarantee of origin function 

has been jeopardised provided that there is an impact on 

the trade mark’s other functions. 

The relationship between double identity cases and the 

protection against dilution afforded by art.5(2) is also 

now unclear. Advocate General Jääskinen considers this 

issue in Interflora Inc v Marks & Spencer Plc in his 

Opinion of March 24, 2011. He notes that in the case of 

double identity protection against blurring, tarnishment 

and free-riding may now be accorded by art.5(1)(a), 

following the rationale of L’Oréal v Bellure that use of 

an identical sign falls under art.5(1)(a) provided there is 

an adverse effect on any of the functions of the trade 

mark, including those such as the quality, communication, 

advertising or investment functions which underlie the 

protection against dilution accorded by art.5(2), not only 

the origin function. Carried to its logical conclusion, this 

would mean that in cases of double identity the 

distinctiveness and repute of the trade mark might be 

protected irrespective of whether the mark has a 

reputation as required by art.5(2), in other words, whether 

it is well known or not. The Advocate General points out 

that Davidoff extended the application of art.5(2) to not 

just similar but also identical goods. Although constrained 



to accept that the CFEU has accepted parallel application 

of art.5(1)(a) and 5(2) the Advocate General was clearly 

troubled by the ramifications of this development and 

interestingly commented as follows: 

“It seems to me that trade mark dilution as a legal 

phenomenon should in all cases be analysed on the 

basis of Article 5(2). This would entail that the 

notions relating to trade mark dilution are interpreted 

uniformly despite the differences in the degrees of 

similarity required to exist between allegedly 

infringing goods or services and those covered by a 

trade mark in the situations referred to in Article 

5(1)(a), (1)(b) and (2) of Directive 89/104 

respectively.” 24 

As a result the Advocate-General considered that: 

“All trade mark functions—with the exception of 

the origin function—can have a role to play in the 

application of Article 5(2) … even if they have 

already been applied in determining the applicability 

of Article 5(1)(a).” 25 

Thus it seems that the boundaries between the categories 

of infringement are becoming ever more blurred, as a 

result of the doctrine of essential functions, if cases of 

double identity involving marks which are not well known 

may in effect receive under art.5(1)(a) equivalent 

protection to that accorded under art.5(2). A glimmer of 

hope that this will not happen does however emerge from 

the Max Planck Study at para.2.184: 

“As regards the additional trade mark functions, in 

particular those of guaranteeing the quality of goods, 

communication, investment and advertising, and 

their interpretation in double identity cases, it should 

be accepted as a principle for the future practice that 

these functions do not play an autonomous role in 

defining the scope of protection under Article 5(1)(a) 

TMD and Article 9(1)(a) CTMR. An adverse effect 

on these functions has no relevance for protection 

under the double identity rule.” 

Clearly there is an urgent need for the CJEU and indeed 

the Max Planck Institute, which has conducted a review 

of the Trade Marks Directive and CTM Regulation, to 

take the opportunity to restore order and clarity to 

European trade mark law. 

Clarification of trade mark law following 

L’Oréal v Bellure 

Mr Justice Arnold in Interflora v Marks & Spencer had 

helpfully summarised the questions which are left to be 

clarified following L’Oréal v Bellure, as follows. 

24 Interflora v Marks & Spencer Opinion March 24, 2011 at [64]. 


Precisely what are the functions of a trade 

mark which may be affected by the use of 

a sign? 

The Max Planck Study accepts there is legal uncertainty 

in this area and has recommended as follows in 

para.2.187: 

“Issues relating to the purpose and scope of trade 

mark protection should be addressed in the 

Preamble. The aim should be to give a full account 

of the functions performed by trade marks, without 

thereby blurring the contours of legal provisions 

determining the ambit of trade mark law.” 

Questions which might be addressed are what exactly is 

meant by the guarantee of quality and how in practice is 

this different from the guarantee of origin given that most 

brand owners will wish to promote the quality of their 

products/services. In addition, what is meant by the 

communication, investment and advertising functions of 

a mark? These are unclear and undefined concepts which 

offer no certainty to businesses. Is there any difference 

between the communication and advertising functions of 

a mark, and is it not the case that any unauthorised use 

of a trade mark must impact on such functions? For the 

investment function to be affected, is it necessary to show 

that an investment has been made in the promotion of the 

mark? If it is also necessary to show the mark has been 

advertised in order to claim the advertising function has 

been impaired, how is this different from impairment of 

the investment in the mark? 

Precisely what is required in order to 

establish that such functions are liable to 

be affected in order to found a claim under 

art.5(1)(a)? 

Likelihood of confusion is not required to be proved under 

this heading but it appears the use must still affect the 

origin function of the mark. The Max Planck Study at 

para.2.181 states that under current law infringements 

falling under the double identity rule are considered as 

“absolute” in the sense that no likelihood of confusion 

needs to be established. Protection is however not 

unlimited. If the sign is used on goods not originating 

from the proprietor infringement will be excluded (only) 

if the function of guaranteeing origin is not affected 

because the public does not consider the mark as a sign 

indicating origin. This the authors of the study say is “a 

limitation inherent in Article 5(1)(a)”. It may be that this 

is just another way of saying that if the use is not use as 

a trade mark there will be no infringement. If so, should 

we not formulate an appropriate defence, rather than add 

a requirement which seems to fly in the face of the literal 

wording of the statute? 


The Max Planck Study goes on to contrast cases where 

a mark is used to identify the goods of the proprietor 

(which it calls referential or nominal use) where 

limitations follow from the exceptions of arts 6 and 7 of 

the Trade Mark Directive. The Study recommends setting 

out in the Preamble that the “double identity” rule may 

relate to these two different kinds of cases. 

What is the relationship between a claim 

under art.5(1)(a) and art.5(2) in a double 

identity case (identical marks and identical 

goods/services)? 

Perhaps this question may now be reformulated and 

expanded as follows. 

Should we reassess and restructure the 

overall relationship between art.5(1)(a), 

art.5(1)(b) and art.5(2)? 

Is it logical that, in the case of marks with a reputation 

and similar goods/services, under art.5(2) non-origin 

association is sufficient for trade mark infringement, 

although it would, in an otherwise identical set of 

circumstances but involving a mark without a reputation, 

not be sufficient under art.5(1)(b)? Even more bizarrely, 

as noted above, is it correct that in cases of double identity 

(identical mark/sign and identical goods/services) which 

would include marks with a reputation under art.5(1)(a) 

there must apparently be an affect on the origin function 

of the mark whereas for identical (or similar) marks/signs 

with a reputation and similar goods/services non-origin 

association may suffice under art.5(2) where there is an 

impact on the other functions of the mark. Furthermore, 

as discussed earlier, if the non-origin functions such as 

the advertising function may apply to the assessment of 

double identity infringement under art.5(1)(a) and may 

be applied in parallel to assessment of infringement under 

art.5(2), does that in effect mean that the dilution 

protection of art.5(2) is available to marks without a 

reputation? 

Arguably a rational trade mark system would require 

that the origin function be relevant only to art.5(1)(a) and 

5(1)(b), and the other functions (but not origin) only to 

art.5(2), in other words art.5(1) and 5(2) would be 

mutually exclusive. This would, however, require a 

rewriting of the existing law. It is interesting to note that 

the Advocate General in Interflora v Marks & Spencer 

seems to have reached such a conclusion: 

“In my opinion these issues partly stem from the 

problematic drafting of Article 5 of Directive 89/104. 

Therefore the actual situation might be better 

remedied by appropriate legislative measures than 

a reorientation of case-law, as the example of the 

development of the United States federal legislation 



27 Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) [2008] E.C.R. I-8823; [2009] E.T.M.R. 13 at [6]. 

28 Waterford—Waterford Stellenbosch, Case R240/2004-2, Second Board of Appeal, November 23, 2010. 

on trade mark dilution shows. I observe that the 

Commission in December 2010 received a Study 

Relating to the Overall Functioning of the Trade 

Mark System in Europe [the Max Planck Study], 

and further steps in this area can hopefully be 

expected.” 26 

A further important question which also requires 

consideration follows. 

When is an advantage unfair? 

Is the requirement that there be an intention to take 

advantage of a mark with a reputation a sine qua non of 

infringement under this heading? In view of the scope 

for uncertainty caused by the ruling and in L’Oréal v 

Bellure and the application of its principles by national 

courts especially in the United Kingdom it would be good 

to have this point clarified. 

In addition, different approaches have been taken by 

the CFEU to detriment to distinctive character and unfair 

advantage as regards the evidential requirement to prove 

injury or damage. The Intel decision (C-252/07) of 

November 27, 2008 held that proof of detriment to 

distinctive character (blurring/dilution) requires “evidence 

of a change in the economic behaviour of an average 

consumer of the goods and services” 27 or a serious 

likelihood that such change will occur in the future. By 

contrast L’Oréal v Bellure held that unfair advantage can 

be taken of the repute of a registered mark with a 

reputation without the need to show any detriment to the 

distinctive character or repute of such mark. As a result 

it has been possible in a registration context, for example 

in the OHIM Board of Appeal decision 

Waterford—Waterford Stellenbosch, 28 for an opposition 

to succeed on the basis of a “non-hypothetical risk” of 

unfair advantage being taken of an earlier mark with a 

reputation, even where there was no serious risk of 

detriment to the distinctive character or detriment to the 

repute of such earlier mark. It is thus much easier to 

establish “unfair advantage” than “detriment to distinctive 

character” as a ground of opposition since there is no 

need to provide evidence of economic damage to the 

earlier mark, or likelihood of such damage. 

The Max Planck Study accepts that claimants who 

would fail because of Intel to enforce their dilution claims 

“can always rely on the ‘taking advantage branch’ of the 

claim”, and recommends as follows at para.2.200: 

[2011] E.I.P.R., Issue 9 © 2011 Thomson Reuters (Professional) UK Limited and Contributors 

“The current English text allows an interpretation 

that ‘unfairness’ applies only to the taking 

advantage, but not to the detriment caused. The 

requirements should be set out in detail to avoid that 

interpretation. This would also add to the 

understanding of the ‘taking advantage’ part of the 

provision insofar as ‘unfairness’ and lack of ‘due


cause’ need to be assessed separately, and are not 

implied in the taking of commercial advantage as 

such.” 

And finally, a wider question to consider is as follows. 

Is it time to harmonise the laws of unfair 

competition in the European Union? 

The controversy of L’Oréal v Bellure has, as Jacob L.J. 

noted, at its heart the relationship between trade mark 

and competition law. It has for the first time brought rights 

akin to those protected by the law of unfair competition, 

until now confined to continental Europe, across the 

Channel into the United Kingdom. It is likely, without 

harmonisation of unfair competition laws, that the L’Oreal 

v Bellure ruling will be interpreted and applied, in 

particular in relation to what is an “unfair advantage”, 

according to the laws of parasitical trading, slavish 

copying and other unfair competition law concepts as 

these are understood in the relevant European Member 

States. Indeed it is interesting to note that many of the 

terms discussed in the case law of the CFEU, such as 

parasitism, tarnishment, blurring and “riding on the coat 

tails”, which are not English law concepts, are not set out 

in the literal wording of the legislation as currently 

enacted. On the other hand concepts such as “unfair 

advantage” and “without due cause” which do appear in 

the legislation are typically not discussed in detail or at 

all. 

It is also likely, as has apparently already happened 

that the United Kingdom, a jurisdiction which has until 

now not had an unfair competition law, will interpret the 

ruling in as restrictive a way as possible, for example by 

requiring the element of intention to take an unfair 

advantage. As well as reforming or clarifying trade mark 

law in Europe, perhaps there is a need to consider 

harmonising national laws of unfair competition. In this 

way it should also be possible to circumscribe what is 

“fair competition” and ensure that acts falling within this 

category are not adjudged to take “unfair advantage” of 

a mark with a reputation in the context of trade mark law. 

The Max Planck Study may have paved the way for 

such an approach by recommending that unregistered 

well-known trade marks having a reputation should be 

accorded the same protection as that accorded to 

registered trade marks. However any legislative changes 

which are proposed by the Commission later in 2011 on 

the basis of the Max Planck Study recommendations are 

realistically not likely to include anything so far-reaching 

in scope. It is to be hoped that nevertheless the proposals 

for new legislation will grasp this important opportunity 

to provide us with a clearer, more internally consistent 

and comprehensive European trade mark law.

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