The European Court of Justice has extended protection for trademarks in the EU in a judgment in L’Oréal v Bellure today.

The claimants, cosmetics manufacturers L’Oréal, Lancôme, and Laboratoire Garnier, accused the defendants, Bellure, Malaika Investments and Starion International, of infringing their trademark rights by manufacturing and selling imitations of well-known perfumes – despite the fact that all parties agreed that the similarities were unlikely to confuse customers.

However, the ECJ decided that a third party that sought to ‘ride on the coat-tails’ of the owner’s trademark ‘in order to benefit from the power of attraction’ was in the wrong – even if the trademark owner suffered no direct financial loss. The court cited the marketing expenditure that trademark owners had to make to promote their brand, from which third parties should not be allowed to profit.

Furthermore, Malaika and Starion had provided retailers with comparison lists, which indicated the name of the trademarked perfume that was being imitated. Bellure manufactured the imitation perfumes.

The court held that third parties could not use comparison lists featuring the trademarks of the trademark owner alongside their names of their imitation brands, ‘even where such use is not capable of jeopardising the essential function of the mark’. The court decided that using comparative lists ‘must be considered to be an advantage taken unfairly of the reputation of that mark’.

The claimants owned trademarks for their Trésor, Miracle, Anaïs Anaïs and Noa perfume ranges. In the UK, Malaika and Starion marketed imitations of these fine fragrances as the ‘Creation Lamis’ range. Starion also marketed imitations under the names ‘Dorall’ and ‘Stitch’. The ‘Creation Lamis’ and ‘Dorall’ ranges were produced by Bellure.

The case had been referred to the ECJ by the UK Court of Appeal in 2007.