Clash of the Courts - 02/06/2010

It is almost unprecedented for an English judge to speak out unfavourably against decisions made by European counterparts but Court of Appeal judge Lord Justice Jacob has pointed the finger at the European Court of Justice accusing it of restricting freedom of speech with regard to its judgement in the case of L'Oreal Group -v- Bellure NV.

This case has been trundling through the courts for the past six years with L'Oreal asserting that Bellure infringed their trademark by employing very similar packaging to that of L'Oreal and by telling customers that their product was the same as L'Oreal's. L'Oreal relied on s 10 (1) (3) of the Trade Marks Act 1994 which states:

10. Infringement of registered trade mark

(1) a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to good or services which are identical with those for which is registered.

(3) A person infringes a registered trade mark if he uses in the course of trade a sign which -

(a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of the repute of the trade mark.

The European Court of Justice found that Bellure's use of L'Oreal trademarks had amounted to a deliberate attempt to present their products as direct imitations of L'Oreal products.

Lord Justice Jacob, speaking with the concurrence of Lord Justices Wall and Rimer, stated that had he been free to make his own decision without influence of the European Court of Justice he would not have found in favour of L'Oreal, he pointed out that he is in favour of free speech, particularly when someone wishes to tell the truth regardless of whether that truth delivers commercial gain to the speaker.

His Lordship seemed to be saying that a truth itself should be protected and recognised and doesn't have to carry any high minded moral purpose or strong emotion. Furthermore he suggested that the European Court of Justice ruling could be interpreted as being anti-competitive saying: "If a trader cannot (when it's truly the case) say: "my goods are the same as Brand X (a famous registered mark) but half the price", I think there's real danger that important areas of trader will not be open to proper competition."

Lord Justice Jacob also suggested that the decision placed this area of European law in conflict with that of other countries, the US for example, where trademark law would not be used to suppress truthful advertising and keep a product off the shelves in contravention of the basic right to freedom of speech.

The Court of Appeal judges were forced to comply with the ruling of the European Court of Justice when delivering a judgment in the case. The judge's comments may very well open up further debate or possibly legal challenges as the matter seems far from clear.

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