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552 European Intellectual Property Review 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. [2011] E.I.P.R., Issue 9 © 2011 Thomson Reuters (Professional) UK Limited and Contributors
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 The Implications of L’Oréal v Bellure—A Retrospective and a Looking Forward 553 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. [2011] E.I.P.R., Issue 9 © 2011 Thomson Reuters (Professional) UK Limited and Contributors
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