[Editor's note] After the decision of the European Court of Justice in this case, It has received widespread attention in the European Union. The case was decided against the then relevant European Union regulations on comparative advertising, Clarify and explain hot issues such as trademark infringement and unfair competition, It has an important guiding and forecasting function for similar disputes after that. Therefore, Although the controversy in this case is relatively old, Here we summarize the key rulings in the case, We hope it will be helpful for Chinese customers and partners to understand relevant EU regulations and practices. 　　

[background] 　　

L' Oréal And its subsidiaries (Hereinafter referred to as "plaintiff" ) Production and sales of high-grade perfume products. They have several famous brand names for fine perfumes in the UK, For example "Trésor" , "Miracle" , "Ana? s-Ana? s" and "Noa" Equivalent trademark, Graphic and text combination trademark and commodity three-dimensional packaging trademark, And so on. Malaika and Starion Both companies sell in the UK "Creation Lamis" series, "Dorall" Series sum "Stitch" A series of high-end perfume imitations. Among them, "Creation Lamis" Series sum "Stitch" The serial product manufacturer is Bellure. Some imitation products use commodity packaging and appearance similar to the well-known trademarks involved in the case, But not to the extent that the consumer public in the field is confused about the source of goods. Malaika and Starion In the sale of such imitations, Provide a comparison sheet to the distributor, Using the plaintiffs' trademark names to denote the premium perfume products corresponding to the counterfeit products they sell. 　　The plaintiffs took their case to the High Court of England and Wales, Claim identification Malaika, Starion and Bellure Etc (Hereinafter referred to as "defendant" ) The above actions constitute trademark infringement. The plaintiff argues that, In the comparison table, the defendant uses a well-known written trademark in which the plaintiff has the ownership, and, Some of the imitation products of the defendant use similar packaging to the well-known trademark goods of the plaintiff, Infringement of its trademark rights. 　　

2006 years 10 month 4 day, The court of first instance partially upheld the plaintiff's claim. First instance, Neither side of the defendant is satisfied with the judgment of first instance, Appeal separately. Court of Appeal on whether the use of a competitor's trademark in the comparison table constitutes "Directive of the First Council of the European Union on the harmonization of trademark legislation in the Member States (The first 89/104/EEC No) " (Has been "Directive of the European Parliament and of the Council on the harmonization and harmonization of trademark laws in the Member States (The first 2008/95/EC No) " replace, Hereinafter referred to as "European Union regulation 89/104/EEC Number instruction" ) The first 5. 1. a Article prohibited comparative advertising behavior; and, The imitation is packaged in a similar way to the original high-end perfume, But it has not caused confusion among the consumer public, Whether the directive is No 5. 2 prescribed "Unjust enrichment (unfair advantage) " Etc, Be in doubt. Therefore, The court decided to stay the proceedings, And asked the European Court of Justice (Court of Justice) To make preliminary rulings on relevant issues. 　　

[conclusion] 　　

First of all, Regarding whether the use of similar packaging containing another person's registered trademark in imitation goods constitutes "European Union regulation 89/104/EEC Number instruction" The first 5. 2 Bar prohibition situation, The European Court of Justice held that, Instruction control 5. 2 Article shall be understood as, A third party uses a mark similar to a well-known trademark on its goods or services, Gain interest in the sales process, Even without causing confusion among the concerned public about the source of the goods, Or cause damage or risk of damage to the trademark and its owner, It should still be deemed to have obtained improper advantage. 　　According to "European Union regulation 89/104/EEC Number instruction" The first 5. 2 Provision of article, Use a logo similar to a well-known trademark, Causing the relevant public to misbelieve that there is a relationship between the mark and the well-known trademark but not to confuse the two, Infringement of well-known trademark rights. Therefore, There is no need to prove that the similarity between a mark used by a third party and a well-known trademark has reached such a level that it causes confusion and misidentification by the public, It only needs to be demonstrated that the degree of similarity is sufficient to cause the concerned public to believe that there is a link between the contested mark and the well-known trademark. 　　But to apply "European Union regulation 89/104/EEC Number instruction" The first 5. 2 Provision of article, In addition to proving a correlation, It also needs to be shown that the conduct in question caused any of the following harm: Damage the distinctive features of a well-known trademark, Damage the famous reputation of the trademark, or, Improper use of prominent distinguishing features of well-known trademarks or well-known reputation for profit. 　　The conspicuous distinction of a well-known trademark is impaired, Also known as "weakening (dilution) " , "cut (whittling away) " or "fuzzification (blurring) " , This damage will lead to a reduction in the ability of a well-known trademark to distinguish the origin of goods or services, Because the use of the same or similar mark with the well-known trademark by a third party will distract the recognition of the well-known trademark and its impression in the relevant public consciousness. 　　

Damage the reputation of a well-known trademark, Also known as "vilify (tarnishment) " or "deterioration (degradation) " , It refers to the use by a third party of the same or similar mark of a well-known trademark on a particular commodity or service, As a result, the attraction of the well-known trademark to the relevant public declined, For example, The specific nature or quality of goods or services may have a negative impact on the image of well-known trademarks. 　　

Improper use of prominent distinguishing features of well-known trademarks or well-known reputation for profit, Also known as "parasitism (parasitism) " or "hitchhike (free-riding) " , The act does not damage the well-known trademark, But through the use of the same or similar to the well-known trademark improper profit. Judge whether there is improper use of prominent distinguishing features of well-known trademarks or reputation to gain benefits, The facts of the case should be comprehensively analyzed, Including the reputation of well-known trademarks and the degree of significant difference, And the similarity between the infringing mark and the well-known trademark and the goods or services designated for use, And so on. 　　The court has ascertained in this case, The purpose of the imitation products produced and sold by the defendant is to use packaging similar to the well-known trademark goods of the plaintiff, To cause the concerned public to believe that there is a connection between the imitation and the plaintiff's high-end perfume, To promote sales of its imitations. 　　For that matter, No financial compensation or effort was paid by the third party, Make use of the attraction of well-known trademarks created and maintained by trademark owners, Prestige and honor, To use on its goods or services a mark similar to a well-known trademark of another person, Gain commercial benefits, It shall be deemed as obtaining improper benefits by using the distinctive features of a well-known trademark or its reputation. 　　then, About whether the comparison table is comparative advertising, And third parties using their registered trademarks in comparative advertising, But does not damage the trademark "Indicate the source of goods or services" Core function of, Whether the trademark owner can apply "European Union regulation 89/104/EEC Number instruction" ) The first 5. 1. a Article to be prohibited, etc, The European Court ruled as follows: 　　 "Directive of the Council of the European Union on the harmonization of legal norms in Member States concerning misleading advertising (The first 84/450/EEC No) " (Have been "Directive of the European Parliament and of the Council of the European Union on harmonising the legal norms of the Member States on misleading and comparative advertising (The first 97/55/EC No) " replace, Hereinafter referred to as "European Union regulation 84/450/EEC Number instruction" ) The first 2. 1 Article provision, "advertising" Inclusion and trade, commerce, Any statement relating to workmanship and other aspects, The purpose is to promote the sale of goods or the supply of services. Instruction control 2. 2a Point out, Where a competitor's goods or services are expressed or implied in an advertisement, All belong to comparative advertising. Therefore, The comparison sheet of goods provided by the defendant to its distributor in this case falls within the scope of comparative advertising under the Directive. 　　The European Court of Justice previously ruled in O2 Holdings A case (Case number: C-533/06) Stated in the ruling, Advertisers use the same or similar logo as a competitor's trademark in comparative advertising, Used to indicate a competitor's goods or services, The advertiser shall be deemed to have acted in relation to its goods or services "European Union regulation 89/104/EEC Number instruction" The first 5. 1 article (Use of the same or similar mark as a protected trademark on the same or similar goods or services) Sum control 5. 2 article (Using the same or similar mark as a well-known trademark on different goods or services) Use a competitor's trademark for specified purposes. 　　In this case, The defendant sells the same goods as the plaintiff——perfume, At the same time, the plaintiff's word trademark is used in the commodity comparison table, Conform to "European Union regulation 89/104/EEC Number instruction" The first 5. 1 The circumstances specified in the article. The first 5. 1 The article states that the purpose is, Protect the rights of trademark owners, That is to ensure that the trademark can realize all the functions of the trademark——Indicate the source of goods or services (Core function) , As well as guarantee the quality of goods or services and promote investment and other auxiliary functions. 　　The European Court of Justice held that, Defendant used plaintiff's word mark in commodity comparison table, Not just to objectively describe other people's goods or services, But to promote its own products. Therefore, The accepting court shall try all the facts of the case, Judge whether the defendant's above behavior has prevented the trademark owner from realizing the trademark function, Immediate violation "European Union regulation 89/104/EEC Number instruction" The first 5. 1 Provision of article. 　　Finally, For using a competitor's trademark in a comparison table, Indicates that the sale is an imitation of someone else's goods, Its imitations and the main characteristics of other people's goods (Like the perfume in this case) The same, Whether belong to "European Union regulation 84/450/EEC Number instruction" The first 3a. 1 The problem with the prohibition situation, The European Court of Justice has also responded. 　　 "European Union regulation 84/450/EEC Number instruction" The first 3a The original intention of the article is, Comparative advertising is allowed to objectively describe the advantages and disadvantages of a comparable product with a competitor, Promote market competition, To the ultimate benefit of consumers, However, forms of advertising that may disrupt the normal order of competition are prohibited: For example, Smear or disparage another's trademark; Improper use of another's trademark reputation; Copy or pass off another person's goods or services. 　　In this case, The defendant clearly stated in its commodity comparison table that the commodities sold were imitations of the plaintiff's well-known trademark perfume products, The aim and effect is to attract legitimate perfumes (Plaintiff's product) Target consumers were concerned about the counterfeit products sold by defendants, Belong to "European Union regulation 84/450/EEC Number instruction" The first 3a prohibited "imitation" The situation of. 　　Because in comparative advertising it is stated that the sale is a copy of someone else's product, It is prohibited by law, Therefore, The commercial interests obtained by the actor through the advertisement belong to the profit from unfair competition, That is, improper use of others famous trademark reputation to gain benefits. 　　

[comment] 　　

The European Court of Justice ruled in this case, The infringement problem and unfair competition problem of using other's trademark in comparative advertisement are clarified, Summarize the previous cases of infringement of well-known trademarks, Explain the legal and prohibited situations of comparative advertising, It has important reference value for such disputes in the future. 　　

author: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights