Questions referred to the European Court of Justice in L’Oreal:
Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned
by a competitor for the purposes 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 (b) of
Art 5 of Directive 89/104?
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 (particularly a smell of a fragrance product) of his own
product (particularly its smell) in such a way that:
it does not cause any likelihood of confusion of any sort; and
it does not affect the sale of the products under the well-known registered mark; and
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
it plays a significant role in the promotion of the defendant’s product
does that use fall within Art 5(1)(a) of Directive 89/104?
In the context of Art 3a(g) of the Misleading Advertising Directive (84/240) 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?