L’Oreal v. Bellure: Muddying the Waters of Trademark Law

L’Oreal v. Bellure: Muddying the Waters of Trademark Law

I. Introduction

Several years ago, the English and Welsh Court of Appeals (“EWCA”) was asked on remand to readdress a significant trademark case in light of new guidance provided by the European Court of Justice (“ECJ”).The case, L’Oreal SA & Ors v Bellure NV & Ors, dealt with the legality of advertising comparison lists.[1] Before remanding, the ECJ ruled that free riding, or taking advantage of the reputation of a registered mark, could be actionable per se.[2] In reaching this conclusion, the ECJ significantly expanded the scope of trade mark protection. The UK does not have a tort for unfair competition,[3] however the ECJ used this case to lay the groundwork for a very similar tort— one focused on the infringer’s unjust enrichment, independent of consumer confusion or registered trade mark dilution. Although the EWCA applied the rules limiting advertising comparison lists, as articulated by the ECJ, it did so tentatively. In applying the new rules, Lead Justice Jacob did not hesitate to voice his concerns about the ECJ’s decision:

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“I regret that the ECJ in this case has not addressed the competition aspects of what it calls “riding on the coattails”. The trouble with deprecatory metaphorical expressions such as this (“free-riding” is another), containing as they do clear disapproval of the defendants’ trade as such, is that they do not provide clear rules by which a trader can know clearly what he can and cannot do” (emphasis added).[4]

Justice Jacob concluded that in its attempt to clarify the regulation of advertising comparison lists, the ECJ had in fact done the reverse. Instead, the ECJ had muddied the water and created ambiguity for future traders. As Dev Ganjee summarizes in Because You’re Worth It: L’Oréal and the Prohibition on Free Riding,“The ECJ’s broad prohibition on free riding is theoretically unsound, runs counter to the thrust of European trade mark law and could negatively impact on the competitiveness of the European marketplace.”[5] Unfortunately, this was the inevitable result of an overly-expansive reading of Article 5(2). Because the plaintiff was unable to prove likelihood of confusion or blurring or tarnshiment, the ECJ had to instead find a violation based on the unfair benefit that the defendant might derive from free-riding.[6] In doing so, the ECJ made two significant errors. First, it disregarded trade mark law’s historical emphasis on consumer confusion and proprietor goodwill and instead fixated on the parasitic intent of the supposed infringing party. Second, the ECJ failed to thoroughly consider the economically anti-competitive nature of their ruling. This essay will first summarize the case and the law at issue in the case. It will then address the ECJ’s findings in light of European Union Intellectual Property Office “EUIPO” Boards of Appeal decisions as well as general principles of intellectual property. Finally, it will consider the effect of the L’Oréal decision thus far.

II. Facts of the Case

 The case involved a dispute between two perfume manufacturing companies, the L’Oréal Group and Bellure. The plaintiffs, the L’Oréal group, produced and marketed luxury perfumes. They owned the several trade marks in the United Kingdom including the names, bottles, and packaging of the Trésor, Miracle, Anaïs-Anaïs and Noa perfumes. These products were central to the dispute. The defendants, Bellure, were producers of replica fragrances.[7] Bellure began producing its replicas in the mid 1990s, taking advantage of the fact that the ‘cost of the major fragrance brands was beyond the pocket of many consumers [and] the demand was for affordable perfumes in attractive bottles and packaging, with fragrances similar to those of popular designer brands.”[8] Bellure marketed its perfumes to the lower end of the market and largely sold them in supermarkets, discount stores and street markets. Several of Bellure’s perfumes were marketed as imitations of L’Oréal’s Trésor and Miracle perfumes. Bellure made no attempt to conceal the fact that it was using bottles and packaging similar to those of L’Oréal’s Trésor and Miracle brands. Bellure also provided comparison lists to their retailers, indicating which L’Oréal fragrance their perfume imitated. L’Oréal objected to the similar packaging and the comparison lists, claiming they violated various of L’Oréal’s registered trade marks. L’Oréal sought to prohibit Bellure’s use of L’Oréal perfume names in the comparison list, as well as Bellure’s use of imitative packaging. L’Oréal argued that (1) Bellure’s perfumes damaged, or were likely to damage, its business by creating confusion; and (2) Bellure was taking a ‘free ride’ on L’Oréal’s investments. Importantly, L’Oréal argued that its claims were to defend the considerable creative and financial investments it had devoted to producing and marketing their high quality fragrances. They argued Bellure’s infringement was prohibited by section 10(1) and section 10(3) of the Trade Marks Act 1994.

 L’Oréal brought proceedings before the High Court of Justice of England and Wales, Bellure then appealed to the EWCA. On its first assessment of the case, Lead justice Jacob summarized the factual findings, indicating his perception of the case, as the following,

 (i) It is lawful to make and sell a smell-alike product.

(ii) The best and only practical way to describe its smell is to inform people that it smells like X.

(iii) That is done by the use of the comparison lists.

(iv) The Defendants get a major promotional advantage from using such lists.

(v) Neither customers nor ultimate consumers are deceived as a result of the use of the lists.

(vi) Neither the image nor the distinctiveness of the trade mark for the comparable fine fragrance is impaired by the use of the lists – there is no tarnishment or blurring.

(vii) Sales of the corresponding fine fragrance are not affected by the use of the lists.[9]

Thus, although the EWCA referred five questions to the ECJ, it clearly did so with the view that it thought the comparison lists should be considered lawful.

II. Legal Issue: Is Free Riding an “Unfair Advantage” under Article 5(2)?

The two pieces of legislation at issue in L’Oréal were the Trade Marks Directive[10] (“TMD”) and the Comparative Advertising Directive[11] (“CAD”). The TMD protects the ownership rights associated with a trade mark. Conversely, the CAD describes specific scenarios in which a marketer can legally make use of a competitor’s trade mark for comparative advertising. After analyzing these two pieces of legislation, the EWCA referred five questions to the ECJ. This essay will focus on the fifth question which asked whether free riding is considered an ‘unfair advantage’ under TMD Article 5(2).[12] Article 5(2) states the following:

”Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

First, the ECJ first explained that Article 5(2) protection is wider than Article 5(1) protection. This is because no likelihood of confusion is required.[13] Instead, the court concluded, a link between a competitors sign and the registered trade mark in the mind of the public would be sufficient.[14] This link, however, was a necessary— not sufficient condition—to establish an Article 5(2) violation. In addition to this link, the court would have to find one of the following: (1) Detriment to the distinctive character of the mark (“dilution”) (2) Detriment to the repute of the mark (“tarnishment”) or (3) Taking unfair advantage of the distinctive character or repute of the trade mark, commonly known as “free-riding” on the coat-tails of the well-known mark. Thus, the ”taking of an unfair advantage of the reputation of a mark” could be unfair,even if the “use of the identical or similar sign was not detrimental either to the distinctive character or to the repute of the registered mark, or to its owner, nor was there a likelihood of confusion to consumer.”[15] (emphasis added). Finally, and most importantly, the ECJ explicitly stated that free-riding could qualify as an unfair advantage. The ECJ concluded a competitor’s use of a sign similar to a mark with a reputation:

“was an advantage unfairly taken of the distinctive character or the repute of the mark, where that use sought to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the owner of the mark in order to create and maintain the mark’s image.”[16]

As Dr. Chronopoulos summaries in Property Rights in Brand Image, “the CJEU essentially created a qualified property right in brand image with the proprietor being able to internalise that intangible value in the limited context of its use as a marketing tool.”[17]

To determine if an unfair advantage had occurred, the ECJ explained that courts should carry out a global assessment, taking into account all factors relevant to the circumstances of the case. These factors include whether the mark had a strong reputation and distinctive character, as well as the the degree of similarity between the marks and the goods and services at issue. Unfair advantage was more likely to arise when mark had distinctive character and a strong reputation.[18] Finally, the ECJ noted that the ‘global assessment’ should consider whether there was a likelihood of dilution or tarnishment.[19] In this case, there was a link between L’Oréal’s and the Bellure’s packaging— a link which provided Bellure with a commercial advantage. The court noted that the EWCA should consider that Bellure’s choice to use packaging and bottles similar to L’Oréal’s was intended to take advantage, for promotional purposes, of the distinctive character and reputation of L’Oréal’s trade marks. Thus the ECJ concluded that, with regard to article 5(2), that “the concept of unfair advantage, also referred to by it as parasitism or free-riding, does not relate to the detriment caused to the famous mark, but to the advantage obtained by the later user.”[20]

IV. Assessing the Decision in light of Case Law and EUIPO Board of Appeal Decisions

There existed a number of previous cases that the ECJ could lean on in in support of its findings, however most of these cases can be distinguished from the scenario presented by L’Oréal. Most importantly, Adidas-Salomon and Adidas Benelux[21] introduced the notion of a ‘link in the mind of the public’ as being a sufficient element. The court explained that ‘The condition of similarity between the mark and the sign, referred to in Article 5(2), requires the existence, in particular, of elements of visual, aural or conceptual similarity.[22] The court explained, “The infringements referred to in Article 5(2), 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 even though it does not confuse them.”[23] Thus, while this case makes very little reference to notion of ‘free-riding’, it indicates that ‘a link in the mind of the public’ might be sufficient without the need for likelihood of confusion.

Several earlier EUIPO Board cases, however, discussed the notion of free-riding. One such decision came from the EUIPO (formerly known as OHIM) in Mango Sport System v Diknak, SL.[24] The application was for a mark titled ‘Mango’ for protective helmets. The earlier Mango mark was famous for clothing. OHIM denied the application, citing the potential for unfair advantage. The board noted that athletic, fashionable women might aim to match their athletic accessories to their Mango-brand clothing. The Board stated that, ”the advantage for the third party arises in the substantial saving on investment in promotion and publicity for its own goods, since it is able to ‘free ride’ on that already undertaken by the earlier reputed mark”.[25] It is important to note, however, that unlike Bellure, the defendants in Mango did not compare their items to the plaintiffs’, but instead attempted to use the trade mark owned by Mango to sell items under the guise that they might also be Mango fashion items. Thus, consumer confusion was still at issue.

Another relevant decision was Mluihens GrnbH & Co KG v The Hearst Corporation, in which the fourth EUIPO Board of Appeal found that registration of ‘Cosmopolitan Cosmetics’ as a brand name would take unfair advantage of the ‘Cosmopolitan’ magazine trade mark.[26] As Apostolos Chronopoulos summarizes, “Given that the magazine was better known in France than the applicant’s goods and that both marks were essentially the same, the Board opined that it was plausible to assume that the reputation of the first mark could be used as a vehicle for facilitating the marketing of the applicant’s goods.”[27] Thus, the court is implicitly stating that ‘free-reeding’ or taking advantage of another proprietor’s marketing efforts could justify a violation. Again, however, there is clearly an implicit concern that the consumer might purchase ‘Cosmopolitan Cosmetics’ thinking that they were associated with Cosmopolitan Magazine, thus the issues of both blurring and tarnshiment are relevant. It is worth nothing however that in Mluihens, the board, commenting on the unfairness of free-riding, stated that ‘[s]uch advantage would be unfair, because it would be based on the opponent’s fame, rather than on the applicant’s own marketing efforts,’ which somewhat mirrors the ECJ’s analysis in L’Oréal.[28]

Finally, regard should be given to Antartica Sri v OHIM and the Nasdaq Stock Market Inc.[29] Confirming a decision of the Second Board of Appeal, EUIPO found that the use of the word ‘nasdaq’ could help associate the applicant’s high-tech sporting equipment with the idea of modernity associated with the registered stock market mark ‘NASDAQ.’ Of relevance was the fact that the Court specifically referenced the minutes of one of the applicant’s shareholder’s meeting, which revealed that the mark was adopted in light of this link. These minutes indicated that the mark was chosen to encourage a link between the two marks in the mind of the public. Thus, there is an implication that parasitic intent is of concern to the court. However, as with the previous cases, there is a clear concern here that the consumer might accidentally associate the products with the products marketed by the registered mark (i.e. consumer confusion)— and that this might well have been the applicant’s intention.

Although these cases introduce the notions of the ‘link in the mind of the public’, free-riding and ‘parasitic intent’, they all do so within the context of consumer confusion. Conversely, by providing the comparison lists, Bellure had made it clear to consumers that their products were not a L’Oréal perfume. Instead, consumers would be aware that they were purchasing a cheaper version— most purchasers of luxury perfumes could easily identify a replica from the the real thing. Thus, consumer confusion was in no way at risk— leaving the ‘unfair’ advantage gained by Bellure as the only possible grounds for finding a violation. Thus, the ECJ’s choice to conclude that free-riding and parasitic intent alone could justify reflection a revolution of law, not an evolution based on EUIPO board decisions.

V. Assessing the Decision Part in light of Free Speech and Free Trade

Not only did the ECJ dramatically extend far beyond any ‘free-riding’ violation precedent, they did so at the cost of limiting free speech— a notion that they failed to even consider in their opinion. It is widely accepted that any limitation placed upon free speech ought to scrutinized extensively and justified only on the grounds of strict necessity, particularly when the speech under analysis is truthful. The protection of a proprietor’s financial investment in his or her own advertising campaign should not satisfy the a strict necessity standard. In his application of the ECJ’s findings, Lead Justice Jacob highlighted the risks of undervaluing free speech. He noted that there was no reason to dilute free speech when the speaker’s motive for telling the truth was his own commercial gain. Justice Jacob recognized that the ECJ’s decision would result in a ‘muzzling’ of traders, which in turn to harm the consumer, who would consequently be less educated. LJ Jacob concluded that it made no sense to prevent a party from speaking the truth when the truth would cause “no harm to the trade mark owner – other than possibly a “harm” which, to be fair, L’Oréal has never asserted. That “harm” would be letting the truth out – that it is possible to produce cheap perfumes which smell somewhat like a famous original.”[30]

Second, the ECJ failed to consider importance of freedom of trade and the resulting benefits derived from vibrant competition. Free trade is an essential element of the European economic market, thus the undermining of such should be approached with caution. By further inserting itself into the world trade mark marketing, the ECJ will effectively stymy the free exchange of goods and services by preventing certain properties from accurately marketing their goods. As Jacob LJ explains, the ECJ had created a real danger that important areas of trade would not be open to proper competition if a trader could not say (when it was true): “my goods are the same as Brand X (a famous registered mark) but half the price”. Jacob further aptly noted that that, in its strident criticism of those who “ride on the coat-tails” of others, the ECJ had failed to fully addressed the implications for European market competition.

VI. Application of the L’Oréal Decision

An analysis of the decision would be incomplete without a consideration of how European courts and EUIPO Boards of Appeal have gone about implementing the decision. In applying L’Oréal The boards have relied on two factors in determining whether an applicant, or defendant, is guilty of this new ‘free riding.’ category of violation. First, boards look to the intention of the infringing party. Second, boards often consider whether the two products at issue are similar— essentially amounting to a likelihood of confusion analysis, without explicitly stating so. Both scenarios will be addressed below.

A major case considering the role of the infringer’s intention was Interflora Inc v Marks & Spencers.[31]This case considered whether a competitor could make use of rival’s mark as a keyword in an internet referencing service. ECJ noted that Interflora’s reputation made it likely that many internet users would use its mark as a keyword when looking for products. It would follow that where Marks & Spencer bought various strings of signs corresponding to or resembling Inferflora’s trade mark as keywords for Google AdWords, its intent was clearly to take advantage Interflora’s distinctive character and reputation. The court concluded that when internet users, after looking at the competitor’s advertisement, were to purchase the product of the competitor instead of that of the trade mark proprietor, to which their search originally related, the competitor derives a real advantage.[32] In the course of its judgment, the court made a number of references to the L’ Oréal case. Applying the ruling, the court reached the conclusion that the use of the famous mark as a keyword did amount to the taking of an unfair advantage. In accordance with L’Oréal, the court found an intention to benefit from the marking efforts of another, as well as a “real advantage”, without any risk of consumer confusion, was sufficient to amount to a violation. Importantly, however, the board noted that the use of the keyword could also lead to both dilution and tarnishment of Interflora’s reputation.

Unsurprisingly, the EWCA has come to the opposite conclusion regarding the finding of an unfair advantage in several cases, including Whirlpool Corporation v Kenwood Limited.[33] Whirlpool involved a trade mark for the shape of kitchenware. The Court of Appeal noted that “the facts in this case are a long way from L’Oreal in which the alleged infringers had shown a clear intention to take advantage of the distinctive character and repute of trade marks.” No allegation of intention was made and Kenwood had its own established goodwill on which it sought to build and rely. Consequently, the court concluded, Kenwood did not have to ride on the opponent’s coat-tails in order to save on promotional efforts in relation to its new product.

Courts have also taken into consideration the similarities of the two companies at issue. For example, in You-Q BV v OHIM and Apple Corps Ltd,[34] the defendant was making use of the word Beatle for its wheelchairs, which was opposed by the proprietor of the famous Beatles music group trade mark. The mark was said to be still synonymous with youth and a “certain counter-culture of the 1960s, an image which is still positive”.[35] It was held that the image transfer that would take place would enable the applicant to “introduce its own trade mark on the market without incurring any great risk and the costs – in particular advertising costs – of launching a newly created mark”.[36]

Boards of appeals have also concluded that two companies are not sufficiently similar to create the necessary ‘link’ in the mind of the consumer. For example, in Fratelli Martini[37]it was held that the use the word element Fratelli Matini for lightning apparatuses would not take advantage of the image of ‘success, glamour, jet set, beautiful people’ associated with earlier mark, Martini. The Board noted that the market sectors are completely different. Unlike alcoholic beverages, lightning apparatuses are not typically marketed to consumers Similarly, in Subway[38]the board concluded that image of healthy or fresh sandwich products attached to the figurative mark subway could not, be of any commercial benefit to the marketer of household furnishings or ceramic products. Although the boards have clearly managed to work with the ruling, results are clearly unpredictable— a wheelchair and a band having sufficient similarity but household furnishings and vodka failing the test.

VII. Conclusion

Although Boards have done their best to implement this new ‘free-riding’ category of violation, a trade mark right protection based on ‘free-riding’ alone is ambiguous, infringes on free trade and free speech, and goes directly against the underlying goals of protecting intellectual property, of which it is easy to pinpoint two. First, the protection of the consumer, by way of preventing consumer confusion, whilst maximizing consumer choice and information. Second, protection of the proprietor’s goodwill— including preventing dilution of the proprietor’s name as well as tarnshiment to his or her reputation. The majority of trade mark law is designed to further one of these two goals. In L’Oréal, however, the ECJ created a third protected category: proprietor financial investment in advertising. Further, the court went on to state that to avoid any guise of ‘free-riding’ a proprietor wishing to market their goods in the EU must ensure that they are conducting their own effective advertising efforts. As Dr. Chronopoulos summarizes, “Accordingly, for the defendant to be off the hook in cases of image transfer, his individual efforts should not be plain promotional measures but rather some highly transformative adaptation of the image conveyed by the senior mark or at least involve the introduction of new information into the junior commercial symbol.”[39] Essentially, the ECJ inserted itself into the advertising market and declared that was qualified to decide whether a company had devoted sufficient efforts to marketing their own goods. In doing so, although the ECJ didn’t explicitly adopt the position that any commercial advantage is unfair, in basically stopping once any link in the mind of the consumer, if there has been established if there is a commercial motivation for making that link, it may as well have. The result is something that looks quite similar to a tort of unfair competition, the exclusive limitation being that only trade marks with a reputation will qualify, making it crucial for courts and EUIPO boards to have a clear understanding of the standard for establishing when a marks has a reputation – something which so far has been rather imprecise.

References

• Adidas and Adidas Benelux [2003] ECR I-12537
• Adidas and Adidas Benelux, Case (C-102/07 10 -04-2008).
• Antartica Sri v OHIM and the Nasdaq Stock Market Inc (Case T‐47/06, 10-05-2007).
• Comparative Advertising Directive 2006/114/EC, a consolidation of 84/450/EEC.
• Dr. Apostolos Chronopoulos & Professor Spyros Maniatis, Property Rights in Brand Image: the Contribution of the EUIPO Boards of Appeal to the Free-Riding Theory of Trade Mark Protection in EUIPO (ed), 20 years of the Boards of Appeal at EUIPO, Celebrating the Past, Looking Forward to the Future, Liber Amicorum, 147-162, Alicante, 2017 p. 154.
• Gangjee, D. and Burrell, R., ‘Because You’re Worth It: L’Oréal and the Prohibition on Free Riding’, The Modern Law Review, Blackwell, Oxford, Vol. 73, No 2, 2010, p. 282.
• General Motors Corp v Yplon SA (Case C-375/97, 14-09-1999).
• Hodgkinson Corby Limited and Another v Wards Mobility Services Limited [1995] F.S.R. 169.
• Interflora Inc., Interflora British Unit v Marks & Spencer plc, Flowers Direct Online Ltd (Case C‐323/09, 22-09-2011)
• L’Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010) at 15.
• L’Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd, trading as ‘Honey pot cosmetic & Perfumery Sales’, Starion International Ltd (Case C-487/07, EU:C:2009:378); [2009] E.T.M.R.
• Mango Sport System v Diknak, SL (Case R308/2003-1, 12-03-2004).
• Mluihens GrnbH & Co KG v The Hearst Corporation(Case 552/2000-4, 26-07-2001).
• Martini v Fratelli Martini (Case R 1244/2006-1, 30-07-2007)
• R. W. Alberts, I Love the Smell of Perfume in the Morning – The L’Oréal Case and Trade Mark Infringement, 2013 J. S. Afr. L. 74 (2013) p. 76.
• Subway v Subway (Case R 1311/2013-2, 14-08-2014)
• Trade Marks Directive 89/104/EEC.
• Whirlpool Corporation v Kenwood Ltd [2009] EWCA Civ 753.
• You-Q BV v OHIM and Apple Corps Ltd (Case T-369/10, 29-03-2012).

[1] L’Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd, trading as ‘Honey pot cosmetic & Perfumery Sales’, Starion International Ltd (Case C-487/07, EU:C:2009:378); [2009] E.T.M.R.

[2] Gangjee, D. and Burrell, R., ‘Because You’re Worth It: L’Oréal and the Prohibition on Free Riding’, The Modern Law Review, Blackwell, Oxford, Vol. 73, No 2, 2010, p. 282.

[3] Hodgkinson Corby Limited and Another v Wards Mobility Services Limited [1995] F.S.R. 169, Jacob J. at 174- 175, stating that there is no tort for unfair competition.

[4] L’Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010)

[5] Gangjee, ‘Because You’re Worth It’ p. 283.

[6] According to the World Intellectual Property Organization (WIPO), free riding is defined as ‘any act that a competitor or another market participant undertakes with the intention of directly exploiting another person’s industrial or commercial achievement for his own business purposes without substantially departing from the original achievement

[7] The defendants also included Malaika Investments Ltd, trading as Honey pot cosmetic & Perfumery Sales, and Starion International Ltd, marketers of Bellure’s perfumes. In this essay, the defendants will be collectively referred to as “Bellure.” The plaintiffs will be referred to as “L’Oréal.”

[8] Gangjee, ‘Because You’re Worth It’ p. 283.

[9] L’Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010)

[10] 89/104/EEC.

[11] 2006/114/EC, a consolidation of 84/450/EEC.

[12] The question, in full: Where a trader uses a sign which is similar to a registered trade mark which has a reputation, and that sign is not confusingly similar to the trade mark, in such a way that: (a) the essential function of the registered trade mark of providing a guarantee of origin is not impaired or put at risk; (b) there is no tarnishing or blurring of the registered trade mark or its reputation or any risk of either of these; (c) the trade mark owner’s sales are not impaired; and (d) the trademark owner is not deprived of any of the reward for promotion, maintenance or enhancement of his trade mark;(e) but the trader gets a commercial advantage from the use of his sign by reason of its similarity to the registered mark, does that use amount to the taking of an “unfair advantage” of the reputation of the registered mark within the meaning of Art.5(2) of Council Directive89/104?” L’Oréal (Case C-487/07, EU:C:2009:378); [2009] E.T.M.R. 55 at [H8].

[13] L’Oréal (Case C-487/07, EU:C:2009:378); [2009] E.T.M.R. 55 at [34].

[14] Ibid. At [37]

[15] Ibid. at [43].

[16] Ibid at [50].

[17] Dr. Apostolos Chronopoulos & Professor Spyros Maniatis, Property Rights in Brand Image: the Contribution of the EUIPO Boards of Appeal to the Free-Riding Theory of Trade Mark Protection in EUIPO (ed), 20 years of the Boards of Appeal at EUIPO, Celebrating the Past, Looking Forward to the Future, Liber Amicorum, 147-162, Alicante, 2017 p. 154.

[18] L’Oréal (Case C-487/07, EU:C:2009:378); [2009] E.T.M.R. 55 at [44].

[19] Ibid.

[20] R. W. Alberts, I Love the Smell of Perfume in the Morning – The L’Oréal Case and Trade Mark Infringement, 2013 J. S. Afr. L. 74 (2013) p. 76.

[21] [2003] ECR I-12537, paragraph 27; and Adidas and adidas Benelux, Case C-102/07 10 -04-2008, at 40.

[22] Ibid.

[23] Ibid. citing, General Motors Corp v Yplon SA (Case C-375/97, 14-09-1999) at 23.

[24]Mango Sport System v Diknak, SL (Case R308/2003-1, 12-03-2004).

[25] Ibid.

[26]Mluihens GrnbH & Co KG v The Hearst Corporation(Case 552/2000-4, 26-07-2001).

[27] A. Chronopoulos, Property Rights p. 157.

[28] Ibid. at [158].

[29] Antartica Sri v OHIM and the Nasdaq Stock Market Inc (Case T‐47/06, 10-05-2007).

[30] L’Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010) at 15.

[31] Interflora Inc., Interflora British Unit v Marks & Spencer plc, Flowers Direct Online Ltd (Case C‐323/09, 22-09-2011).

[32] Ibid at [87].

[33] Whirlpool Corporation v Kenwood Ltd [2009] EWCA Civ 753.

[34] You-Q BV v OHIM and Apple Corps Ltd (Case T-369/10, 29-03-2012).

[35] Ibid. at [71].

[36] Ibid. at [73].

[37]Martini v Fratelli Martini (Case R 1244/2006-1, 30-07-2007)

[38] Subway v Subway (Case R 1311/2013-2, 14-08-2014)

[39]A. Chronopoulos, Property Rights p. 156.