L’Oréal SA Lancôme parfums et beauté & Cie Laboratoire Garnier & Cie v Bellure NV Malaika Investments Ltd Starion International Ltd; An Excerpt.

OPINION OF ADVOCATE GENERAL

MENGOZZI

delivered on 10 February 2009 ¹(1)

Case C‑487/07

L’Oréal SA

Lancôme parfums et beauté & Cie

Laboratoire Garnier & Cie

v

Bellure NV

Malaika Investments Ltd

Starion International Ltd

(Reference for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division))

(Approximation of laws – Trade marks – Directive 89/104/EEC – Article 5(1)(a) – Use of another person’s trade mark for identical goods in comparative advertising – Article 5(2) – Unfair advantage taken of the repute of a trade mark – Comparative advertising – Directives 84/450/EEC and 97/55/EEC – Article 3a(1) – Conditions under which comparative advertising is permitted – Unfair advantage taken of the reputation of a competitor’s trade mark – Imitation or replica of the goods protected by a competitor’s trade mark)

1.        The present reference for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division) poses questions concerning the interpretation of Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (2) and Article 3a(1) of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, (3) as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997. (4)

I –  Legislative framework

2.        Article 5 of Directive 89/104, (5) entitled ‘Rights conferred by a trade mark’, is worded as follows:

‘1.      The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a)      any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b)      any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

2.      Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

3.      The following, inter alia, may be prohibited under paragraphs l and 2:

(a)      affixing the sign to the goods or to the packaging thereof;

(b)      offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c)      importing or exporting the goods under the sign;

(d)      using the sign on business papers and in advertising.

...’

3.        Article 6(1) of Directive 89/104, entitled ‘Limitation of the effects of a trade mark’, states that ‘[t]he trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

(a)      his own name or address;

(b)      indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;

(c)      the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;

provided he uses them in accordance with honest practices in industrial or commercial matters’.

4.        Directive 97/55 inserted into Directive 84/450, which initially related only to misleading advertising, a series of provisions on comparative advertising.

5.        Article 2(2a) of Directive 84/450, as amended by Directive 97/55 (‘Directive 84/450’), (6) defines ‘comparative advertising’ for the purposes of that directive as ‘any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor’.

6.        Article 3a(1) of Directive 84/450 provides as follows:

‘Comparative advertising shall, as far as the comparison is concerned, be permitted when the following conditions are met:

…

(d)      it does not create confusion in the market place between the advertiser and a competitor or between the advertiser’s trade marks, trade names, other distinguishing marks, goods or services and those of a competitor;

(e)      it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor;

…      

(g)      it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products;

(h)      it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name.’

II –  The proceedings before the national court and the questions referred for a preliminary ruling

7.        L’Oréal SA, Lancôme parfums et beauté & Cie and Laboratoire Garnier & Cie (collectively, ‘L’Oréal’) are companies forming part of the L’Oréal group, which is engaged, inter alia, in the production and marketing of luxury perfumes.

8.        L’Oréal is the proprietor, in particular, of the following national (British), international or Community trade marks, registered for perfumes and other fragrance products:

–        the ‘Trésor’ brand:

–        the national word mark Tresor (without an accent) (‘the word mark Trésor’);

–        the national word and device mark consisting of the representation of a perfume bottle, viewed from the front and the side, showing, in particular, the word Trésor (‘the Trésor perfume bottle trade mark’);

–        the national word and device mark consisting of the representation in colour of a perfume box, viewed from the front, showing, in particular, the word Trésor (‘the Trésor box trade mark’);

–        the ‘Miracle’ brand:

–        the Community word mark Miracle (‘the word mark Miracle’);

–        the Community word and device mark consisting of the representation of a perfume bottle, viewed from the front, showing, in particular, the word Miracle (‘the Miracle perfume bottle trade mark’);

–        the international word and device mark consisting of the representation in colour of a perfume box, viewed from the front, showing, in particular, the word Miracle (‘the Miracle box trade mark’);

–        the national word mark Anaïs-Anaïs;

–        the ‘Noa’ brand:

–        the national word mark Noa Noa;

–        the national and Community word and device marks, both consisting of the word Noa in a stylised form.

9.        Bellure NV (‘Bellure’), a company constituted under Belgian law, started, in 1996 and 2001 respectively, marketing on the European perfume markets the Creation Lamis and Dorall ranges, produced on its behalf and to its design specifications in a non-member country. Starion International Ltd (‘Starion’) purchased those perfumes from Bellure and distributed them to wholesalers and ‘hard discount’ stores in the United Kingdom. Starion also distributed perfumes from the Stitch range in the United Kingdom. Malaika Investments Ltd, trading under the name Honeypot Cosmetics & Perfumery Sales (‘Malaika’), sold wholesale in the United Kingdom perfumes from the Creation Lamis range, which were supplied to it by Starion. The perfumes in those three ranges were imitations of the fragrance of successful perfumes and were sold at extremely low retail prices (less than GBP 4).

10.      In marketing those perfumes in the United Kingdom, Starion and Malaika made use of and supplied to their retailers comparison lists which made an analogy, in terms of similarity of smell, between each of those perfumes and a luxury perfume identified by reference to the word mark by which it is known (‘the comparison lists’). L’Oréal’s word marks Trésor, Miracle, Anaïs-Anaïs and Noa Noa appeared on those lists.

11.      Moreover, four perfumes from the Creation Lamis range and one from the Dorall range were sold in bottles and boxes which were generally similar in appearance to the bottles and boxes of the Trésor, Miracle, Anaïs-Anaïs and Noa perfumes, although it is accepted that that similarity was unlikely to mislead retailers or consumers as to the origin of the product.

12.      L’Oréal brought proceedings before the High Court of Justice of England and Wales (Chancery Division) alleging trade mark infringement against, inter alia, Bellure, Starion and Malaika. It submitted, first, that the use of comparison lists by Starion and Malaika constituted an infringement of the rights pertaining to its Trésor, Miracle, Anaïs-Anaïs and Noa Noa word marks and also to the Noa word and device marks, contrary to section 10(1) of the Trade Mark Act 1994 (‘the TMA’), which transposed Article 5(1)(a) of Directive 89/104 into domestic law. Secondly, L’Oréal maintained that the imitation of the names, bottles and boxes of its Trésor, Miracle, Anaïs-Anaïs and Noa perfumes and the sale of perfumes in such imitative bottles and boxes constituted infringement of the rights pertaining, in particular, to its Trésor, Miracle, Anaïs-Anaïs and Noa Noa word marks and its Trésor and Miracle perfume bottle and box trade marks, contrary to section 10(3) of the TMA, which transposed Article 5(2) of Directive 89/104 into domestic law.

13.      The High Court granted the action against the use of the comparison lists based on section 10(1) of the TMA but the action based on section 10(3) of the TMA was granted only in part, since the court held that there had been infringement only of the Trésor box trade mark and the Miracle perfume bottle trade mark.

14.      Starion and Malaika (‘the appellant companies’) appealed against the decision of the High Court to the Court of Appeal. L’Oréal cross-appealed, seeking a declaration that the Trésor and Miracle word marks, the Trésor perfume bottle trade mark and the Miracle box trade mark had been infringed.

15.      The Court of Appeal dismissed L’Oréal’s cross-appeal and decided that it was necessary, for the purpose of resolving the remaining dispute, to refer the following questions to the Court of Justice for a preliminary ruling:

‘(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 (b) of Article 5(1) of Directive 89/104?

(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 jeopardise 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 Article 5(1)(a) of Directive 89/104?

(3)      In the context of Article 3a[1](g) of [Directive 84/450], 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 Article 3a[1](h) of the said directive, what is the meaning of “present[ing] 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;

(b)      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;

(e)      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 of Article 5(2) of [Directive 89/104]?’

16.      Finding that the comparison lists at issue constitute comparative advertising within the meaning of Directive 84/450, the Court of Appeal states that the first four questions referred seek to establish whether the use of L’Oréal word marks in the appellant companies’ comparison lists is lawful.

17.      On the other hand, the fifth question referred seeks a ruling on whether the use by those companies of bottles and boxes similar to those protected by the Trésor box trade mark and the Miracle perfume bottle trade mark is lawful.

III –  Legal analysis

A –    The first four questions referred for a preliminary ruling

1.      Introductory observations

18.      All the first four questions referred for a preliminary ruling relate to the use by an advertiser of another person’s trade mark in comparative advertising consisting, in particular, of comparison lists such as those at issue in the present case. In that context, another person’s trade mark is used for the purposes of distinguishing goods, which are in fact the goods of the proprietor of the trade mark itself and not those of the advertiser.

19.      The Court of Appeal finds that the distribution of such comparison lists to retailers constitutes advertising within the meaning of Article 2(1) of Directive 84/450. This is, in fact, a representation made in connection with trade for the purpose of promoting the supply of goods.

20.      As mentioned above, the Court of Appeal also held that such advertising constitutes comparative advertising within the meaning of Article 2(2a) of Directive 84/450, a concept which requires, inter alia, the advertiser to be in competition with the undertaking identified (or whose goods or services are identified) in the advertisement. The first question referred, which does not concern the provisions of Directive 84/450, refers to the use of a trade mark owned by ‘a competitor’.

21.      It is, in fact, apparent from the findings of fact made by the Court of Appeal that ‘the parties’ products are not in competition with each other. They are in different price and market sectors’. (7) Such a finding does not, in my view, mean that it is impossible to establish that this case involves comparative advertising within the meaning of Article 2(2a) of Directive 84/450 if account is taken of the broad definition that is to be given to the competitive relationship required under that provision. In that regard, I shall simply refer to the considerations set out at points 63 to 90 of my Opinion in De Landtsheer Emmanuel (8) and at paragraphs 32 to 42 of the judgment in that case, (9) and in particular to the fact that it is also necessary, in that context, to take account of situations of potential competition and how the current state of the market and consumer habits might evolve. Moreover, as L’Oréal correctly observes, account must also be taken of a competitive relationship that exists only at an intermediate level in the distribution chain (for example, at wholesale level). It is for the referring court to examine in greater depth, if appropriate, the question whether there is an actual competitive relationship as required under Article 2(2a) in the light of the criteria for interpretation provided in that judgment.

22.      For the purposes of these proceedings, in the absence of clear evidence to the contrary, it is necessary to proceed on the basis of the premiss adopted by the Court of Appeal, namely that the comparison lists at issue constitute comparative advertising within the meaning of Article 2(2a) of Directive 84/450, and no doubt can therefore be cast upon the admissibility of the third and fourth questions in terms of their relevance to the subject-matter of the proceedings pending before the national court.

23.      In order to answer the four questions under consideration, in particular the first two, it is necessary first of all to determine the relationship between the provisions governing the protection of trade marks to be found, on the one hand, in Directive 89/104, in particular Articles 5 and 6, and, on the other, in Directive 84/450, in particular Article 3a(1), given the conflict between the need to protect trade marks and the need to facilitate the use of comparative advertising.

24.      In the recent O2 judgment, (10) the Court has already provided a number of significant clarifications in this area. In particular, it stated that:

–        ‘[t]he use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104’ and ‘may therefore be prevented, where necessary, by virtue of those provisions’; (11)

–        however, the proprietor of a registered trade mark is not entitled, under those provisions, to prevent the use by a third party of a sign identical with, or similar to, his mark in a comparative advertisement which satisfies all the conditions laid down in Article 3a(1) of Directive 84/450 under which comparative advertising is permitted. (12)

25.      Compliance with those conditions therefore constitutes, for such an advertiser, a valid ground of defence in an action based on national provisions implementing Article 5(1) or (2) of Directive 89/104. In that connection, I do not consider to be correct or necessary the interpretation put forward in the order for reference, with which L’Oréal concurs, that where it is established that those conditions have been complied with, it is possible, as such, simply to regard the use of another person’s registered trade mark (for the sake of brevity, ‘mark’) in a comparative advertisement as being permitted under Article 6(1) of Directive 89/104. While it may be argued that such a use which complies with the requirements laid down in Article 3a of Directive 84/450 is ‘in accordance with honest practices in industrial or commercial matters’, the fact remains that the limitation of the effects of a trade mark under Article 6(1) of Directive 89/104 also requires one of the conditions in (a) to (c) of that provision to be satisfied. However, it seems to me that, in the present case, none of those conditions can be taken into consideration and none is suitable to ‘host’ in Directive 89/104 the ground of defence based on compliance with the conditions laid down in Article 3a(1) of Directive 84/450. I concur, in particular, with the view expressed at the hearing by the Commission’s representative that Article 6(1)(b) of Directive 89/104 relates only to the use of elements of a trade mark which are descriptive of one of the characteristics of goods or services referred to in the provision (descriptive ‘indications’). That would appear to be confirmed, in my view, by the judgment in adidas and adidas Benelux, where it states that ‘Article 6(1)(b) of the directive seeks to ensure that all economic operators have the opportunity to use descriptive indications’ and ‘therefore gives expression to the requirement of availability’. (13) Compliance with the conditions under which comparative advertising is permitted under Article 3a(1) of Directive 84/450 constitutes, in my view, an independent ground of defence, in addition to those in Articles 6 and 7(1) of Directive 89/104, which is capable of defeating an action brought against a comparative advertisement based on national provisions implementing Article 5(1) or (2) of Directive 89/104. 

2.      The first two questions referred for a preliminary ruling, concerning the interpretation of Article 5(1) of Directive 89/104

26.      Since, therefore, the use of any sign which is identical with, or similar to, the trade mark of a competitor is not excluded from the application of Article 5(1) of Directive 89/104 simply because the sign is used in comparative advertising, but such use can, subject to certain conditions, be prohibited on the basis of that provision, it is necessary to answer the first two questions referred by examining those very conditions in the light of the facts set out in those questions.

27.      As the Court of Appeal pointed out, the first question referred has already been put in essence to the Court of Justice by that court in the reference for a preliminary ruling which gave rise to the judgment in O2. In the main proceedings in that case, the subject of the comparison between the (mobile telephone) services provided by the advertiser and those provided by the proprietor of the trade mark used by that advertiser in comparative advertising was identified by the referring court as the price, whereas in the present case the subject of the comparison is identified as smell (with regard to perfumes).

28.      Another difference between the two cases is that, in the O2 case, what was challenged before the national court was the use by an advertiser of a sign that was not identical but merely similar to a competitor’s trade mark, whereas the services offered by those parties and presented in the advertisement were the same. It is for this reason that in the judgment in O2 the Court answered the first question referred for a preliminary ruling, which was formulated essentially in the same terms as the first question in these proceedings, by providing an interpretation only of Article 5(1)(b) of Directive 89/104, considering that it was unnecessary to give an interpretation of Article 5(1)(a) of the directive. In the present case, however, what is contested in the proceedings before the national court, in the action challenging the comparison lists used by the appellant companies, is the use by an advertiser of a sign that is identical with another person’s trade mark for goods that are identical (14) with those bearing that mark.

29.      Consequently, the first question referred in these proceedings, which refers to Article 5(1) of Directive 89/104 in its entirety, must be construed as meaning that the Court of Appeal asks whether Article 5(1)(a) must be interpreted as meaning that the proprietor of a trade mark can prevent a third party from using in comparative advertising a sign that is identical with that mark for goods or services that are identical with those for which that mark is registered even where such use does not give rise to a likelihood of confusion on the part of the public as regards the origin of the goods or services in question.

30.      On the other hand, in the second question, the Court of Appeal expressly seeks an interpretation only of Article 5(1)(a) of Directive 89/104 in order to ascertain whether, under that provision, the proprietor of a well-known trade mark can prevent the use by a third party in the course of trade, in particular in comparative advertising, of a sign that is identical with that mark for goods or services that are identical with those for which that mark was registered, even where such use, while playing a significant role in the promotion of the third party’s goods, does not give rise to a likelihood of confusion on the part of the public as regards the origin of the goods or services in question, does not affect sales of the goods or services designated by that mark and does not in any way harm the reputation of that mark.

31.      According to the case-law of the Court, the risk that the public might be confused as to the origin of goods or services, that is, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings must exist in order for the use of a sign that is identical with, or similar to, another person’s trade mark to be regarded as prohibited under Article 5(1)(b) of Directive 89/104. In other words, the prohibition laid down in that provision applies only where the mark’s essential function, which is precisely to provide consumers with a guarantee of the origin of goods or services, is liable to be affected. (15)

32.      Must the same conclusion be drawn with regard to the prohibition laid down in Article 5(1)(a) of that directive?

33.       The Commission suggests that the answer to that question – which, as the appellant companies observe, must be answered, following the judgment in O2, without having regard to the fact that it is possible to raise defences based on Article 6 of Directive 89/104 or Article 3a(1) of Directive 84/450 to such a prohibition – should be in the affirmative. In its view, the sole purpose of Article 5(1) of Directive 89/104 in its entirety is to protect the essential function of the trade mark, which is precisely to provide the public with a guarantee as to the identity of the origin of the goods identified by that mark. In support of that view, it refers in particular to the judgments in Arsenal, Anheuser Busch and Adam Opel. (16) The first question should therefore be answered in the negative. The appellant companies are of the same opinion.

34.      On the other hand, L’Oréal and the French Government propose that the first question should be answered in the affirmative, arguing that Article 5(1)(a) of Directive 89/104 is not designed solely to protect the trade mark’s function of providing the public with a guarantee as to the identity of the origin of the goods bearing that mark but also to afford protection to the trade mark’s other functions. The 10th recital in the preamble to that directive and the judgments in Arsenal, Anheuser Busch and Adam Opel are relied on in support of that contention. L’Oréal submits that that provision protects in particular the trade mark’s ‘communication functions’, as is apparent from the judgments of the Court of Justice in Parfums Christian Dior (17) and Boehringer Ingelheim and Others (18) and the judgment of the Court of First Instance in VIPS. (19) The French Government, which refers to the trade mark’s function of ‘permitting its proprietor to control and protect the image of its own trade mark in the eyes of consumers’, also prays in aid the judgment in Parfums Christian Dior, which recognised such a function precisely with regard to well-known trade marks identifying luxury perfumes.

35.      I would point out that the ninth recital in the preamble to Directive 89/104 provides that ‘it is fundamental, in order to facilitate the free circulation of goods and services, to ensure that henceforth registered trade marks enjoy the same protection under the legal systems of all the Member States’ and that ‘this should however not prevent the Member States from granting at their option extensive protection to those trade marks which have a reputation’.

36.      With regard to the first aspect, it is to be observed that the scope of the harmonised protection afforded to trade marks prescribed by Directive 89/104 derives essentially from Article 5(1) and (3) and the limitations laid down in Articles 6 and 7 of that directive.

37.      As regards the second aspect, Article 5(2) of the directive permits Member States to confer upon well-known trade marks greater protection than that provided for under Article 5(1). In fact, unlike the latter provision, Article 5(2) does not require Member States to introduce the protection established in that provision into national law but simply gives them the option to provide for such protection. Therefore, where a Member State has exercised that option, trade marks enjoying a reputation benefit in that State both from the protection conferred by Article 5(1) and that provided for in Article 5(2) of the directive. (20)

38.      As regards the protection which must be granted to a trade mark pursuant to Article 5(1) of Directive 89/104, the Commission’s position that the purpose of that provision is solely to protect the function of indicating the origin of the mark is certainly not an arbitrary construction. The 10th recital in the preamble to Directive 89/104, which deals in general terms with the ‘protection afforded by the registered trade mark’, states, apparently not referring only to situations involving similarity between the trade mark and the sign and between the goods or services, that ‘the likelihood of confusion … constitutes the specific condition for such protection’. The fact that that recital specifies that the protection ‘is absolute in the case of identity between the mark and the sign and goods or services’ could simply mean that, in such a case, the proprietor of the mark is not required to prove that there is a likelihood of confusion, (21) in that that is presumed to be the case, (22) and not necessarily that use of the mark may be prohibited also where there is no such likelihood. The judgment in adidas and adidas Benelux (23) states that ‘[t]he likelihood of confusion is the specific condition of the protection conferred by the trade mark, in particular against use by third parties of non‑identical signs’.

39.      However, it is in fact apparent from the 10th recital in the preamble to Directive 89/104 that the function of the protection in question ‘is in particular to guarantee the trade mark as an indication of origin’. (24)

40.      It was also in noting that interpretation that the Court stated for the first time in its judgment in Arsenal(25) that ‘the exclusive right under Article 5(1)(a) of the directive was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions’ and that ‘[t]he exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods’.

41.      While those assertions were confirmed by the Court in its subsequent judgments in Anheuser Busch (26) and Adam Opel, (27) there has been some development in their scope.

42.      In Arsenal, the Court was required in particular to ‘[determine] whether Article 5(1)(a) of the directive entitles the trade mark proprietor to prohibit any use by a third party in the course of trade of a sign identical with the trade mark for goods identical with those for which the mark is registered, or whether that right of prohibition presupposes the existence of a specific interest of the proprietor as trade mark proprietor, in that use of the sign in question by a third party must affect or be liable to affect one of the functions of the mark’. (28)

43.      It is in that context that the Court set out the considerations mentioned at point 40 above before going on to conclude that ‘[t]he proprietor may not prohibit the use of a sign identical with the trade mark for goods identical with those for which the mark is registered if that use cannot affect his own interests as proprietor of the mark, having regard to its functions. (29)

44.      What the judgment in Arsenal therefore seems to suggest is, in essence, that the use of a sign identical with the trade mark for goods identical with those for which the mark is registered does not necessarily affect or is not necessarily likely to affect the functions of the mark and that only where one of the functions of the mark is affected or is likely to be affected may the use by a third party of a sign identical with that mark be prevented under Article 5(1)(a) of Directive 89/104 (the exercise of the exclusive rights is thus ‘reserved’ to such cases). It is on that ground that the Court has held that certain uses for purely descriptive purposes are excluded from the scope of Article 5(1) of the directive; such uses do not infringe any of the interests which that provision is intended to protect and are therefore not covered by the concept of use within the meaning of that provision. (30)

45.      The judgment in Arsenal made impairment (or likelihood of impairment) of one of the functions of the trade mark a prerequisite for the exercise of the exclusive rights laid down in Article 5(1)(a), as is apparent from paragraph 16 of the judgment in Céline. (31) Clearly, that does not mean, however, that it has yet been recognised that use of a trade mark by a third party may be prevented on the basis of that provision where any of the functions of the trade mark is affected or is likely to be affected or, in other words, that all the functions which the trade mark may fulfil are legally protected by that provision. The Arsenal judgment does not identify the various functions of a trade mark nor does it state in an unequivocal manner that all those functions are afforded legal protection by Article 5(1)(a) of Directive 89/104. Moreover, on the basis of the facts in that case, the Court found that the essential function of the trade mark of providing a ‘guarantee of origin’ of the goods was affected or liable to be affected. (32) It could therefore be maintained that in its judgment in Arsenal the Court intended simply not to rule out – without, however, recognising – protection, on the basis of that provision, of a trade mark’s functions other than its essential function, and ultimately left that question open.

46.      I am of the view, however, that in its judgment in Adam Opel, the Court took a further step towards recognising, on the basis of that provision, that protection is to be afforded to a trade mark’s functions other than its essential function.

47.      In that judgment, while the Court, enlarging on the considerations set out at point 40 above, stated, first of all, that ‘the affixing by a third party of a sign identical with a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark’, (33) it then went on in its conclusion to repeat that concept, but omitted the word ‘unless’, when it stated that ‘where a trade mark is registered both for motor vehicles – in respect of which it is well known – and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical with that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models … constitute, for the purposes of Article 5(1)(a) of the directive, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys’. (34) It would not be arbitrary to conclude that that view does not simply amount to an assertion that, in the absence of any impairment (or likelihood of impairment) of the function of the trade mark, the protection conferred by Article 5(1)(a) cannot be called upon (there can be no protection if not even one of the functions of the mark is affected or likely to be affected), but means that what is necessary for such protection to be activated is that any one of the functions of the mark is affected (or likely to be affected) (there is protection if any of the functions of the mark is affected or likely to be affected).

48.      However, also in that judgment the Court did not identify the functions of a trade mark other than its essential function, since it does not appear to have been claimed in the main proceedings that use of the trade mark at issue affected ‘functions of that trade mark other than its essential one’. (35)

49.      Nevertheless, that gradual development in the case-law of the concept of protection under Article 5(1)(a) of trade mark functions other than as a guarantee of origin raises a number of important questions, including in particular that of identifying what those functions are and, in addition, the question of ascertaining how such protection may be reconciled and consistent with the protection granted to well-known trade marks, under Article 5(2) of the directive under consideration, given that, in so far as that provision refers to detriment to the distinctive character or the repute of such a mark, it would also seem to be designed to safeguard trade mark functions.

50.      With regard to the first of those questions, neither Directive 89/104 nor, as far as I am aware, the case-law of the Court has provided a list or a description of the functions of a trade mark other than that as a guarantee of origin.

51.      A useful contribution was provided in that connection by Advocate General Jacobs in his Opinion in Parfums Christian Dior. (36) After observing that ‘[a]lthough the Court has traditionally emphasised the role of trade marks in indicating the origin of products … it has not purported to say that trade mark rights can only ever be relied on in order to uphold that function’, he set out other possible trade mark functions, concluding, moreover, that they are an inherent part or merely derivatives of the essential function: the ‘quality function’ of the mark, in that it ‘symbolise[s] qualities associated by consumers with certain goods or services’ and guarantees that ‘the goods or services measure up to expectations’, and ‘“communication”, investment, or advertising functions’, which ‘arise from the fact that the investment in the promotion of a product is built around the mark’ and are, therefore, ‘values which deserve protection as such, even when there is no abuse arising from misrepresentations about either origin or quality’.

52.      In his Opinion in Arsenal, (37) Advocate General Ruiz-Jarabo Colomer expressed the view that it was ‘simplistic reductionism to limit the function of the trade mark to an indication of trade origin’ and that ‘[e]xperience teaches that, in most cases, the user is unaware of who produces the goods he consumes’ and the trade mark ‘acquires a life of its own, making a statement … about quality, reputation and even, in certain cases, a way of seeing life’. In view of ‘the current functioning of the market and the behaviour of the average consumer’, he ‘[saw] no reason whatever not to protect those other functions of the trade mark and to safeguard only the function of indicating the trade origin of the goods and services’. (38)

53.      With regard to the guarantee of quality, or perhaps, to be more precise, consistency (or uniformity) in the quality of products identified by a trade mark, it has been stated that what this amounts to at most is an aspect of its function as a guarantee of origin. (39) The exclusive right conferred by the mark protects the interests of the trade mark proprietor and consumers cannot rely on it in the expectation that the products will be of a certain quality. While, in general terms, it satisfies the interests of the producer who is the trade mark proprietor, consistency of quality is obviously not automatically ensured by the fact that goods are of the same origin and are all therefore subject to the same quality control procedures, as guaranteed by the trade mark. As Advocate General Kokott recently observed, ‘trade mark rights are granted in order to guarantee the possibility of control over the quality of goods, not the actual exercise of that control’. (40) A trade mark therefore permits the proprietor not only to prevent goods which are not produced by him from appearing to be so (the function of guarantee of origin) but also to prevent the quality of goods produced by him being impaired, in a manner unauthorised by him, at the marketing stage after the goods have first been placed on the market by him or with his consent (see Article 7(2) of Directive 89/104).

54.      With regard to the trade mark’s communication functions, to which L’Oréal refers, there can be no doubt that the trade mark can convey to consumers various kinds of information on the goods identified by it. That may be information communicated directly by the sign which the mark consists of (for example, information on the product’s physical characteristics communicated by descriptive elements which may be incorporated into a composite trade mark) or, as is more frequently the case, ‘accumulated’ information (41) on the mark as a result of promotion and advertising carried out by the proprietor – for example, messages relating to non-physical characteristics which give an image of the product or the company in terms which are general (for example, quality, trustworthiness, reliability, etc.) or particular (for example, a certain style, luxury, strength). That capacity of the trade mark to communicate information merits protection, including where use of the mark by a third party is unlikely to give rise to confusion as to the origin of the goods or services. (42)

55.      As L’Oréal pointed out, it has already been recognised by the case-law of the Court that the ‘reputation’ of a trade mark merits protection and is protected by virtue of the exclusive right conferred under Article 5 of Directive 89/104. The Court considered that ‘[t]he damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of Article 7(2) of the directive, allowing the proprietor to oppose further commercialisation of goods which have been put on the market in the Community by him or with his consent’. (43)

56.      In particular, the fact that the presentation of a repackaged product is liable to damage the reputation of the trade mark identifying that product constitutes a legitimate reason for the purpose of that provision. (44) Accordingly, for example, ‘a repackaged pharmaceutical product could be presented inappropriately and, therefore, damage the trade mark’s reputation in particular where the carton or label, while not being defective, of poor quality or untidy, is such as to affect the trade mark’s value by detracting from the image of reliability and quality attaching to such a product and the confidence it is capable of inspiring in the public concerned’. (45) Moreover, where a reseller makes use of a trade mark in order to bring the public’s attention to further commercialisation of prestigious luxury goods bearing that mark, he must endeavour ‘to prevent his advertising from affecting the value of the trade mark by detracting from the allure and prestigious image of the goods in question and from their aura of luxury’. (46)

57.      While such cases confirm that the protection which the trade mark enjoys as a result of the exclusive right conferred under Article 5 of Directive 89/104 goes beyond the need to protect the trade mark’s function as a guarantee of origin and the existence therefore of a likelihood of confusion as to the origin of the goods or services, the question nevertheless remains open as to the extent to which the protection of the mark’s communication functions, in particular that of communicating the mark’s reputation, against the use of a sign identical with the mark for identical goods is covered by Article 5(1)(a) of Directive 89/104 (in relation therefore to all marks and not only those with a reputation) and the extent to which that protection is covered by Article 5(2) of that directive, a provision which, according to settled case-law, also provides protection regardless of whether there is a likelihood of confusion on the part of the public, albeit only in the case of well-known marks. (47) That question is a delicate one, primarily in view of the fact that:

–        the rules laid down in the two provisions are different, given that the protection under Article 5(1) is mandatory for the Member States, whereas that under Article 5(2) is optional;

–        the Court has held, from the judgment in Davidoff onwards, that Article 5(2) also applies to goods and services which are identical or similar – and not only, as expressly indicated in that provision, to goods or services which are not similar – to those for which the trade mark is registered. (48)

58.      The provision under Article 5(2) of optional protection against harm to the reputation of a trade mark as a result of the use of an identical sign for identical goods might be taken to indicate that the purpose of Article 5(1)(a) is not to protect all the functions of a trade mark against such use. In interpreting the scope of that provision, it may be preferable to follow the approach taken in Arsenal (there can be no protection if not even one of the functions of the mark is affected or likely to be affected) rather than that which may be inferred from the judgment in Adam Opel (there is protection if any of the functions of the mark is affected or likely to be affected). However, it cannot be ruled out that the broad interpretation of Article 5(2) followed by the case-law initiated by Davidoff, which I referred to at the second indent of the preceding point, covers, clearly in addition to the situations expressly referred to in that provision, situations in which a sign is used that is identical with the well-known mark for similar goods or services, a sign is used that is similar to the well-known mark for identical goods or services and a sign is used that is similar to the well-known mark for similar goods or services, but not a situation in which a sign is used that is identical with the well-known mark for identical goods or services, which remains subject to Article 5(1)(a).

59.      In the light of the circumstances of the present case, however, it is unnecessary, in order to answer the questions put by the Court of Appeal, to pursue any further the examination of the problems of interpretation outlined in the two preceding points or to arrive at an exhaustive description of the trade mark functions which may be protected under Article 5(1)(a).