Use of a protected trade mark in comparative advertising

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Use of a protected trade mark in comparative
advertising

• Observations on the pending preliminary
  proceedings in Case C-487/07 LOréal SA et al.
  / Bellure N. V. et al
• Arnaud Folliard-Monguiral, IP Litigation Unit,
  OHIM

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Introduction

• Article 5(1)(a) of the Trade Mark Directive
  (89/104) (the TMD)
• the Misleading Advertising Directive (84/240) as
  amended by the Comparative Advertising Directive
  (97/55) (the CAD) codified by Directive
  2006/114/EC of 12 December 2006
• While the pro-claimant TMD is now clearly
  limited in its scope, the pro-defendant CAD is
  construed in an evermore extensive fashion

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I think it's wrong that only one company makes
the game Monopoly. Steven Wright
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Case C-487/07 The facts

• NICE FLOWERS ANAIS ANAIS

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• It is lawful to make and sell a smell-alike
  product.
• The best and only practical way to describe its
  smell is to inform people that it smells like X.
• That is done by the use of the comparison lists.
• The defendants get a major promotional advantage
  from using such lists.
• Neither customers nor ultimate consumers are
  deceived as a result of the use of the lists.
• 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.
• Sales of the corresponding fine fragrance are not
  affected by the use of the lists.

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Question 1

• Whether comparative advertising falls within Art.
  5(1) TMD where it does not jeopardise the
  essential function of the trade mark as an
  indication of origin ?
• ECJ, Judgment of 12 June 2008, O2

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?

• Art. 4(c) CAD comparative advertising must
  objectively compare one or more material,
  relevant, verifiable and representative features
  of those goods and services, which may include
  price
• Is the equivalence of fragrances verifiable
  objectively?

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Question 3

• Whether the advertiser automatically takes a
  unfair advantage of the reputed mark which serves
  as a comparator ?
• Are unfair advantage and prejudice cumulative
  conditions under Art. 4(f) CAD ?
• Forget X, my product is better
• Think of Y, my product is just as good

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• The benefit of comparative advertising to
  consumers Siemens, par. 24
• Spare parts / add-on components
• Generic pharmaceuticals
• France, Cour de Cassation, 26 March 2008, Deroxat

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Question 4

• What is the meaning of presenting goods or
  services as imitations or replicas ? Does it
  cover smell-alikes ?
• Any product which does not result from an
  independent process of creation
• The degree of freedom of the advertiser in
  developing its own product

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A short conclusion.
and Thank you for your attention !