Reference for a preliminary ruling from Court of Appeal (Civil Division) (United Kingdom) made on 5 November 2007 - 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)

Language of the case: English

Referring court

Court of Appeal (Civil Division)

Parties to the main proceedings

Applicants: L'Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie

Defendant: Bellure NV, Malaika Investments Ltd, trading as "Honey pot cosmetic & Perfumery Sales"), Starion International Ltd

Questions referred

1    Where a trader, in an advertisement for his own goods or services uses a registered

trade mark owned by a competitor for the purpose of comparing the characteristics

(and in particular the smell) of goods marketed by him with the characteristics (and

in particular the smell) of the goods marketed by the competitor under that mark in

such a way that it does not cause confusion or otherwise jeopardise the essential

function of the trade mark as an indication of origin, does his use fall within either

(a) or (h) of Art 5( I) of Directive 89/1 04?

2    Where a trader in the course of trade uses (particularly in a comparison list) a well known registered trade mark for the purpose of indicating a characteristic of his

own product (particularly its smell) in such a way that:

a) it does not cause any likelihood of confusion of any sort; and

b) it does not affect the sale of the products under the well-known registered

mark: and

c) it does not jeopardize the essential function of the registered trade mark as a

guarantee of origin and does not harm the reputation of that mark whether by

tarnishment of its image, or dilution or in any other way; and

d) it plays a significant role in the promotion of the trader's product

does that use fall within Art. 5( 1)(a) of Directive 89/1 04?

3    In the context of Art 3a(g) of the Misleading Advertising Directive (84/450) as

amended by the Comparative Advertising Directive (97/55), what is the meaning of

"take unfair advantage of' and in particular where a trader in a comparison list

compares his product with a product under a well-known trade mark, does he

thereby take unfair advantage of the reputation of the well-known mark'?

4    In the context of Art. 3a(h) of the said Directive what is the meaning of "presenting goods or services as imitations or replicas" and in particular does this expression cover the case where, without in any way causing confusion or deception, a party merely truthfully says that his product has a major characteristic (smell) like that of

a well-known product which is protected by a trade mark?

5    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;

(h) 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 trade mark owner is not deprived of any of the reward for promotion,

maintenance or enhancement of his trade mark;

(c) 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 ofArt.5(2) of the Trade Mark Directive?

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