(1) L’Oréal SA (2) Lancôme Parfums et Beauté and CIE (3) Laboratoire Garnier and CIE v (1) Bellure NV (2) Malaika Investments Ltd (T/A Honeypot Cosmetic and Perfumery Sales) (3) Starion International Ltd: CA (Civ Div) (Lords Justice Jacob, Wall, Rimer): 21 May 2010 Brand names – Comparative advertising – Infringement – Perfumes The court was required to determine issues of trademark law following a decision of the European Court of Justice. The appellants (D) had three ranges of products, each of which smelled like a famous, luxury-branded perfume known by a well-known registered trademark. The respondent (L) alleged that D’s use of comparison lists for each of their ranges of product, showing which products corresponded to which of L’s perfumes, infringed its registered trademarks for those perfumes. The evidence was that: D obtained a major promotional advantage from using such lists; neither customers nor ultimate consumers were deceived as a result of the use of the lists; neither the image nor the distinctiveness of the trademark for the comparable fine fragrance was impaired by the use of the lists; sales of the corresponding fine fragrance were not affected by the use of the lists. The issues for the court were whether, in the light of the judgment of the ECJ, the use of the registered marks on and in relation to the comparison lists fell within article 5(1)(a) of Directive 89/104 and whether that use did not infringe because it complied with Directive 84/450 on misleading and comparative advertising. It was not in dispute that, in the comparison lists relating to perfumes, D had used word marks registered by L and others and that use was made in respect of products which were identical with those in respect of which those marks were registered, namely perfumes. D submitted that the use of the word marks in the lists was merely descriptive. Held: (1) The decision of the ECJ was that in same mark/goods cases where the defendant claimed that his use was descriptive so as to take him outside article 5(1)(a) of the Trade Marks Directive he would only succeed if his use was ‘for purely descriptive purposes’. The word marks belonging to L and others were used in the comparison lists distributed by D not for purely descriptive purposes, but for the purpose of advertising. The ECJ had indicated that the use was within article 5(1)(a). According to the ECJ, the use went beyond ‘purely descriptive’ use because it was used for advertising, L’Oréal SA v Bellure NV (C-487/07)  Bus LR 303 ECJ (1st Chamber) applied. (2) Even though the use fell within article 5(1)(a) it would not infringe if it complied with all the conditions set forth in article 3a(1) of the Comparative Advertising Directive. However, the decision of the ECJ was to the effect that saying, truthfully, that D’s product had an essential characteristic, in the instant case the smell, of the trademark owner’s product amounted to saying that the product was an ‘imitation or replica’ within paragraph (h) of article 3a(1), L’Oréal v Bellure applied. The ECJ further held that if a comparative advertisement failed to comply with paragraph (h) it also took unfair advantage of the mark within the meaning of paragraph (g). A use that was not permitted because the conditions of article 3a(1) were not complied with was regarded as unlawful by the ECJ. Failure to comply with the conditions meant the use was ‘without due cause’ and so not within the exception to infringement of article 6(1)(b) of the Trade Marks Directive because not ‘in accordance with honest practices’. (3) It was not necessary to decide whether there was also infringement of article 5(2) of the Trade Marks Directive. The ECJ had concluded that where a third party attempted, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark, the advantage resulting from such use was to be considered an advantage that had been unfairly taken of the distinctive character or the repute of that mark. Thus there would also have been article 5(2) infringement. Judgment accordingly. Roger Wyand QC, Tom Moody-Stuart (instructed by Field Fisher Waterhouse) for the appellants; Henry Carr QC, Jacqueline Reid (instructed by Baker & McKenzie) for the respondents.