This essay raises the more general issue of the further infringing and blocking powers given to trade marks with a reputation under the Directive (implemented by the Act) and the Regulation. It should, therefore, address the general issues arising from the legislation in UK and EU case law and describe the basic elements of the law in this regard. A point to note here is that in this area, confusion on the part of customers is not necessary, nor is loss to the trade mark owner.

In describing the law, the main developments are from the ECJ, where the meanings of ‘unfair advantage’ and ‘detriment’ have been developed in cases such as L’Oreal and Intel.

The question of what amounts to an unfair advantage, and use ‘without due cause’, is also important. Here it should be noted that the UK Court of Appeal was critical of the ECJ in its L’Oreal reasoning and clearly felt that Bellure’s use (in some respects) was allowable, as there was no deception or unfairness. The ECJ can be criticized for not developing any theory in these areas other than saying (in effect) that use without permission is without due cause, and that any advantage is unfair.

The approach of the ECJ in relation to detriment in Intel, can be contrasted in that the requirement for an impact on the customers’ economic behaviour to be demonstrated appears quite a difficult test to meet.

The law as it has developed can be compared with more theoretical discussions of the nature of brands and how they should be protected. This is discussed in Ilannah Simon’s article, where a number of approaches to brand protection are described. These range from ‘solely a guarantee of origin’ to ‘a monopoly over any invented name’. The latter theory has been attributed to American academic Frank Schechter and has generated considerable debate. The EU legal position can be seen to strike a balance, not giving absolute protection to brand owners but recognizing that a measure of protection beyond that required for a guarantee of trade origin is needed.  The ECJ was clearly influenced by this underlying body of theory in developing its ideas about the “functions of a trade mark”, although this can be criticised (as it was by the CA) for not being helpful in deciding cases.

Whether EU law strikes the balance in the right place can be discussed and the interests of consumers in the debate should be recognized. The consumers in L’Oreal v Bellure got exactly what they wanted, which was a cheap ‘smell-alike’ perfume. Given that no IP right actually protects the smell itself (at least, not in the UK and not in any aspect of EU IP law), should they not be entitled to do this?