Oxford University Comparative Law Forum
Comparative Advertising in the United States and in France
by Charlotte J. Romano*
(2005) Oxford U Comparative L Forum 1 at ouclf.iuscomp.org | How to cite this article
Table of contents
Comparative advertising has been
widely used for over thirty years in the United States. By contrast,
the use of this advertising format has traditionally been – and
still is – very marginal in France. Thus, when a commercial
comparing the composition of two brands of mashed potatoes was
broadcast on French national television in February 2003, several TV
viewers believing this type of advertisement to be prohibited,
notified the French authority responsible for controlling television
A comparison of available comparative advertising statistics
provides a relevant illustration of the contrast between the two
countries. About 80% of all television advertisements2
and 30% to 40% of all advertisements contained comparative claims in
the United States in the early 1990’s.3
Conversely, only twenty-six advertisements were considered to be a
form of comparative advertising in France in 1992 and 1993.4
Although one might assume that a lot of ink has been spilled over
such a striking contrast, few commentators have devoted themselves to
a comparative analysis of the two legal regimes.
The term “comparative
advertising” refers to any form of advertising in which a
trademark owner draws a comparison between his product, service, or
brand and that of a competitor. Comparative claims are variable in
nature. They may explicitly name a competitor or implicitly refer to
him. They may emphasize the similarities (positive comparisons) or
the differences (negative comparisons) between the products. They
may state that the advertised product is “better than”
(superiority claims) or “as good as” the competitor’s
(equivalence or parity claims).
The issue of the legality of
comparative advertising has given rise to numerous debates and
discussions on both sides of the Atlantic.5
The reason lies in the fact that “[t]ypically, comparative
advertisements contain more – or at least apparently more –
information than ‘normal’ advertisements...
and the possible abuse of or benefit to the consuming public is
In addition, consumers seem to accord greater importance to
comparative claims than to non-comparative ones.7
Legislative authorities, courts, administrative agencies,
researchers, and consumers’ representatives often have to deal
with the same straightforward question: to what extent should
comparative advertising be authorized or limited?
The answer requires an
articulation of the conflicting interests of the parties involved in
the advertiser, the competitor subject to the comparison, and the
consumer. Most significant is the conflict between the advertiser
and the competitor.9
On the one hand, the advertiser’s objective is to inform the
public about the qualities of his products or services in a way that
makes consumers more likely to buy them. He wants to be free to use
comparative advertising whenever it appears to be the most effective
On the other hand, the competitor is concerned not only with
decreasing the number of ways his rivals can describe their
products or attract consumer attention, but also with protecting his
reputation and goodwill as well as the fairness of commercial
practices. He wants to impede his rivals from criticizing his
trademarks or goods, or from using them as a standard which they
claim to also meet. The competitor, therefore, has a clear interest
in the prohibition of comparative advertising. At the very least, he
wants to be able to prevent his competitors from making false or
misleading statements about his offered products or services.11
For the sake of clarity, it must be noted that the competitor is
also sometimes the advertiser (and vice versa) and so each has a dual
interest. When it comes to comparative advertising, however, the
established competitor, or the one with the strongest market
position, has a greater interest in the prohibition of this marketing
tool as he is more likely to be used as a benchmark by other
producers in the market. Between those conflicting interests stands
the interest of the consumer who desires to be accurately informed
about the features of the goods or services available on the market.12
There is a close interdependent
relationship between the above particular interests. Traditionally,
the objective pursued in each country with respect to competition
serves as a guideline in determining the individual weighting of each
of them: if the objective is to protect each individual competitor
against his rivals’ aggressive business practices and to
promote competitor welfare, the trend will be to limit comparative
advertising. On the contrary, if it is to stimulate the competitive
process by promoting free competition and to improve consumer welfare
in the marketplace,13
emphasis shall be focused on the interest of the advertiser. Today,
both the United States and France wish to stimulate free competition
and consumer welfare.14
As a result, both countries’ policies encourage comparative
The central issue of this
article is to determine why, despite these identical guiding
policies, comparative advertising remains unusual in France while it
is commonplace in the United States. Attempting to answer that
question unavoidably raises numerous related issues: can the two
regimes be different and nevertheless equally meet the shared
objectives of free competition and consumer welfare? Which other
policies, values, and standards, if any, clash with the policy in
favor of comparative advertising? Is one country’s regime
better than the other?
Part II describes and analyzes
the development of the policy in favor of comparative advertising in
both countries. It explores U.S. and French laws of comparative
advertising and explains that one same principle—the
authorization of truthful and non-confusing comparative
advertising—prevails in the two countries as a result of this
shared policy. Part III contends that the French legal boundaries to
comparative advertising are tighter than those in the United States.
It analyzes the justifications for the existence of such limitations
in France, as opposed to those underlying the absence of such
limitations in the United States. Part IV concludes that the U.S.
comparative advertising legal regime is in every respect more
persuasive than the French regime.
II. A Shared Principle Resting on a Shared Policy
The policy favoring comparative
advertising is based on the premise that comparative advertising –
insofar as it is true and does not create confusion in the public’s
mind as to the source of the goods or services marketed –
promotes free competition and consumer welfare. It is therefore not
surprising that the basic principle of the law of comparative
advertising today in both countries authorizes truthful and
A. Comparative Advertising: A Means of Improving Consumer Welfare and Stimulating Free Competition
It is a generally accepted fact
that the cost paid by consumers when buying a product has two
components: the price of the good and the so-called “consumer
search cost” resulting from the time, energy, efforts, and
amount of money incurred before the purchase in order to gather price
and quality information about the product.15
As Professor McCarthy points out:
If the consumer
knows quite a bit about brand A... and
relatively little about brand Z, then purchasing brand Z
will appear to be a risky choice. “The ideal solution in such a
case would be to somehow make consumers fully informed, so that they
knew as much about the second brand as about the first. The problem
is that such process costs money. It takes time and effort for
consumers to acquire information about the other brands for
themselves, and they may rationally value the benefits of finding a
lower-priced equivalent brand less that the effort required to find
Collecting information about the
product may involve, for example, visiting stores, which generates
time and transportation costs, making telephone calls, and buying
In such a context, comparative advertising is regarded as a
cost-effective means of informing the buying public of the similarity
or superiority of the features of one particular good to those of
Given the wide diversity of goods and services available today,
comparative advertising assists consumers in making choices among
products by providing them with a basis for evaluating the merits of
By providing information to
consumers, comparative advertising is deemed to facilitate
competition. Entering the market is a tough challenge for a
newcomer. He has to expend great efforts, skills, and large sums of
money to develop the reputation of his products, services or brands
through costly and extensive advertising campaigns. In this context,
comparative advertising is considered a strategy to reduce market
entry barriers; it provides consumers with a convenient benchmark for
the new product so that the new entrant only has to advertise the
special features of his product, as opposed to the characteristics it
shares with comparable goods already on the market.
However, only truthful and
non-confusing comparative advertising contributes to consumer welfare
and free competition in the marketplace. The idea that false
advertising affects the “quality of decisionmaking”19
is universally accepted.20
It is deemed to “increase uncertainty and impede informed
decision-making. It is highly correlated with consumers’
dissatisfaction and disappointment.”21
Confusing comparative advertising impairs the primary purpose of the
trademark, which is to provide a means for consumers to distinguish
one manufacturer’s products from those of another.22
Yet, this purpose needs to be preserved to ensure consumer welfare
and competition in the marketplace. This argument was articulated by
the Ninth Circuit in the leading Chanel case:23
[T]he only legally
relevant function of a trademark is to impart information as to the
source or sponsorship of the product...
Preservation of the trademark as a means of identifying the trademark
owner’s products, implemented both by the Lanham Act and the
common law, serves an important public purpose. It makes effective
competition possible in a complex, impersonal marketplace by
providing a means through which the consumer can identify products
which please him and reward the producer with continued patronage.
The beneficial effects of
truthful and non-confusing comparative advertising naturally led both
countries to encourage the use of such a marketing device.
B. The Authorization of Truthful and Non-Confusing Comparative Advertising
Today, the authorization of
comparative advertising appears to be the rule rather than the
exception and has important corollaries in the United States and in
France. However, the two countries have set out identical limits on
the use of this advertising tool by prohibiting the use of false and
1. The Rule: The Authorization of Comparative Advertising
The French and U.S. regimes have
long been radically different. While comparative advertising has
been authorized for a long time in the United States, it has been
accepted only recently and with much effort in France.
a. In the United States
In the United States, maximizing
consumer welfare and promoting a free and competitive economy have
been the guiding objective and “the
keystone of governmental attitude towards the business scene”
for more than 100 years.25
Thus, the use of comparative advertising has rapidly become a
primary goal of judicial and legislative authorities, as well as
administrative agencies, in the area of advertising law.
U.S. courts recognized the
legality of truthful comparative advertising more than thirty years
ago. However, until the late 1960’s, comparative advertising
was often limited by industry self-regulatory codes. Indeed, “[a]
general feeling [existed] in the advertising industry that naming
one’s competitor would only give him free publicity, and might
even evoke sympathy for him.”26
Competitors were therefore referred to as “brand X”
or the “leading brand.”27
This changed with two decisions in the late 1960’s. First, in
the leading 1968 Chanel case, the Ninth Circuit permitted a
person who had copied an unpatented product sold under a trademark to
use that trademark in advertising for the purpose of identifying the
copied product, provided that the advertisement was truthful and did
not create confusion as to source or contain misrepresentations.28
Second, and more important, was
the 1969 Federal Trade Commission (FTC) Policy Statement on
Comparative Advertising, which encouraged the use of comparisons that
name the competitor or the competitive product.29
The FTC’s statement pointed out that truthful comparative
advertising is a valuable source of information to consumers that
could “assist them in making rational purchase decisions.”30
It further explained that this marketing device “encourages
product improvement and innovation, and can lead to lower prices in
However, the negative consequences of false and confusing
comparative claims led the FTC to require “clarity, and, if
necessary, disclosure to avoid deception of the consumer.”32
The use of comparative claims
subsequently increased dramatically in the United States33
and the acceptability of this advertising format has remained
unchanged ever since. Courts often mention the beneficial effects of
comparative advertising. For example, the Seventh Circuit held that
comparative advertising naming a competitor is beneficial to
consumers because “[t]hey learn at a glance what kind of
product is for sale and how it differs from a known benchmark.”34
In this case, the defendant’s packaging of Life Savers Delites
candies stated: “25% LOWER IN CALORIES THAN WERTHER’S®
Similarly, the Eighth Circuit, recognizing the existence of the
“strong public interest in lowest possible prices,”
refused to issue a preliminary injunction against use of the
trademark “Obsession” in a claim for a perfume advertised
as “our version of Obsession.”36
b. In France
Particular attention must be
paid to the three different steps which characterize the history of
the authorization of comparative advertising in France. Indeed, most
of its current limitations37
find their roots in the old French hostility toward this advertising
tool. In addition, judicial precedents provide relevant guidelines
for the interpretation of the current comparative advertising law.
First step. Prior to
1992, statutory provisions were lacking and comparative advertising
was considered highly suspect. It was generally regarded as an
improper business practice and, as such, contrary to the rules of
fair play and ethical standards of advertising.38
The underlying idea was that “businesses [have to be]
protected against unscrupulous outsiders who do not play by the
generally accepted rules.”39
Hence, the use of another’s trademark in advertising, even if
referring to the trademark owner without causing confusion as to its
source, was considered unfair trading on the owner’s reputation
and goodwill or as going beyond the limits of commercial fairness.40
The courts prohibited the use of comparative advertising in
principle and provided only very limited exceptions to this
prohibition. Even truthful and
non-critical comparative claims, such as statements that the
advertiser’s product is as good as or equivalent to his
competitor’s, were regarded as unfair trading.41
Moreover, any reference to another’s prices was strictly
The courts prohibited advertisers from disparaging goods
manufactured by their competitors that did not meet regulations,43
or from comparing the quality of their products with that of their
Comparative advertising was generally considered synonymous with
Arguably, this advertising device was misinforming consumers by
inducing them to think the competing product was derived from the
same source as that of the advertiser.46
Such a comparison was deemed confusing to prospective purchasers and
therefore inconsistent with the primary purpose of French trademark
Fortunately, this position does
not find any support today as most commentators agree that
comparative advertising is a valuable tool for consumer information.48
While the main concern of this reluctance toward comparative
advertising was the protection of competitor welfare, the consumer
was also “thought to be protected indirectly, but effectively
by keeping up these high standards of market ‘morals’
through competitors’ actions.”49
Such indirect protection of the consumer was not effective. If the
consumer and the competitor have a shared interest in the prohibition
of false and misleading comparative advertising, their interests
diverge on truthful comparative advertising:
consumer values true comparative advertising, the competitor objects
to it. Hence, comparative advertising poses a special problem...
where the rules against unfair competition have as their main
objective the protection of competitors against unfair practices
based on the assumption of a parallelism of interests between
consumers and competitors... [T]he indirect
protection of consumers, via competitor actions, [does] not work.50
European institutions have
played an important role in the evolution of the French approach
toward comparative advertising. In 1975, the Council of the European
Economic Community announced a policy favoring comparative
advertising as a means of facilitating consumer choice among
products. It adopted a Resolution articulating five basic consumers’
rights, among them the consumers’ right to information.51
This right rested on the idea that “sufficient information
should be made available” to enable the consuming public to
assess the basic features, including the nature, quality, quantity,
and price, of the goods and services marketed, and to “make a
rational choice between competing products and services….”52
Similarly, the 1991 European Commission’s proposal for a
Council Directive on comparative advertising53
supported the necessity of harmonizing this marketing format in the
In particular, it pointed out that comparative advertising was a
means of both improving consumer information and promoting
The position thus held by
European institutions has, to some extent, led French consumers’
associations, as well as some researchers and practitioners, to
criticize the country’s traditional stance against the use of
comparative advertising. Academic researchers assert that the
interests of competing enterprises to have comparative advertising
prohibited should not prevail over the necessity to ensure market
openness and to inform consumers.56
This idea was also supported by the leading French consumers’
organizations (Union Fédérale des Consommateurs,
Institut National de la Consommation, Association Force
Ouvrière Consommateurs, etc.). At the time of the debate
over the adoption of the 1992 law on comparative advertising,57
these organizations announced a policy favoring the use of
comparative claims as a means of increasing consumer protection by
facilitating consumer information and enhancing competition.58
Second step. The
remarkable shift in the attitude toward comparative advertising leads
to fundamental changes in French advertising law. A breakthrough in
the comparative advertising arena occurred in July 1986 when the Cour
de Cassation abandoned the prohibition of this advertising
Law 92-60 of January 18, 1992 codified the guidelines set out by the
It authorized comparative advertising in principle, but surrounded
its use with strict limitations in order to protect the interests of
both consumers and competitors subject to the comparison.61
Those restrictions were ultimately so restrictive that most
comparative claims were prohibited by courts.62
The most “unexpected limitation” in the 1992 Act was the
requirement for comparative advertisers to disclose, in advance, the
comparative advertisement to the competitors named or referred to in
the ad, in order to enable them to defend against it.63
This disclosure requirement was regarded as a major obstacle to the
use of comparative advertising.64
It allowed the competitor either to commercially retaliate with his
own advertising campaign or to apply for an injunction restraining
publication of the comparative claim. In the end, it deterred
advertisers from using comparisons.65
Advertisements that did not
comply with the requirements of the law were prosecuted as
disparaging, misleading advertising, or trademark infringement.66
For example, the Cour d’appel de Paris prohibited an
advertisement displaying a picture of three cookies together with a
chart indicating the health risks resulting from the consumption of
or exposure to various products: compared to the exposure to tobacco
smoke which ranked eighth with a risk of lung cancer of 1.19, the
consumption of one cookie per day was the fifth risk to health with a
risk of cardiovascular disease of 1.49. The text of the ad stated
“[t]obacco smoke in the air – Life is plenty of risks.
But all are not identifiable.” The court declared the ad
disparaging to cookie manufacturers.67
By contrast, it was on the ground of misleading advertising that the
Cour d’appel de Bourges enjoined use of a price comparison.
The claim compared the prices of a superstore to those of its
competitor, but it only concerned a small number of goods that were
not representative of the most commonly purchased products. The
court held that the ad falsely induced the purchasing public to think
that prices were generally lower in the advertiser’s
Third step. The 1992 Act
remained in force until the adoption on August 23, 2001 of Decree
which implemented European Directive 97/55/EC of October 6, 1997, on
comparative advertising. 70
The provisions of the 2001 Decree are now codified as articles
L.121-8, 9, 10, 11, and 12 of the Code de la Consommation.71
The implementation of the Community legislation slightly relaxed the
conditions of legality of comparative advertising:72
the principle remains that its authorization and the limits on its
use are less draconian than those set out by the 1992 Act. The main
modifications of the 2001 Decree concern the suppression of the
and the broadening of the definition of the products and services
that can be compared.74
Part III discusses whether the remaining limits are flexible enough
for the authorization of comparative advertising to be in practice as
it is in theory or, on the contrary, whether they are so severe that
they shall be regarded as a de facto prohibition of
2. Shared Corollaries to the Authorization of Comparative Advertising
a. A Broad Definition of Comparative Advertising
A claim is a form of comparative
advertising as long as it allows the identification of the competitor
or the competitive product, either explicitly or implicitly. It need
not expressly name a competitor to be comparative. The rule is set
out by statutory article L.121-8 C. con. in France75
and by the courts in the United States. In Castrol, Inc. v.
the Third Circuit held that an advertisement stating that the
advertised motor oil “outperforms any leading motor oil against
viscosity breakdown” and provides “longer engine life and
better engine protection” was comparative, even though the
competitors were not expressly mentioned by name. The court
declared, “[t]here need not be a direct comparison to a
competitor for a statement to be actionable under the Lanham Act.”77
In a like manner, a New York District Court held that a claim which
reproduced the headline and included a satire of a drawing recently
used by the competitor in advertising was a form of comparative
advertisement because it indirectly referred to the competitor.78
Likewise, in L & F Prods. v. Procter & Gamble Co.,79
the court acknowledged that using a competitor’s identifiable
product silhouette was comparative advertising. In this case, where
‘competitor’ bottle used in the commercials [was] in the
shape of the [plaintiff’s] bottle [and] the competitor bottle
used in the commercials contained [plaintiff’s product],”
defendant “did not dispute plaintiff’s claim
that the commercials used [plaintiff’s product] as the
b. A Broad Definition of the Object of the Comparison
French and U.S. laws also
extensively define the object of the comparison. In this regard, the
French 2001 Decree amended the 1992 Act, which required that the
comparison occur between “products or services of a comparable
nature available on the market.”81
The current legislation offers more flexibility than the former
regime to comparative advertisers by allowing comparisons between
products or services “meeting the same needs or intended for
the same purpose.”82
Consequently, similar products such as sunflower and olive oils,
butter and margarine, gas and electric heating, or the services
offered by airlines and railroads can now be compared. Similarly,
U.S. courts authorize comparisons between different, but nevertheless
interchangeable, products. The comparison is legitimate if it is
sensible in light of consumer uses of the products or services
Price is also an element that
can be compared in both countries. Whereas price comparisons were
allowed within narrow limits under the 1992 Act,83
the new French regime does not set any specific restriction to their
and therefore mirrors U.S. law more closely. Indeed, in the United
It is entirely
permissible for an advertiser to make price comparisons between its
products and similar, but not identical, products which its
competitors offer... The general rules regarding
deceptive advertising would apply if an advertiser were to falsely
claim that its product is of comparable value to a much superior
The Chanel case86
offers an illustration of lawful U.S. price comparison. The
advertisement stated that the appellant’s perfumes “duplicate
100% Perfect the exact scent of the world’s finest and most
expensive perfumes and colognes at prices that will zoom sales to
volumes you have never before experienced” and “[w]e dare
you to try to detect any difference between Chanel #5 (25.00) and
Ta’Ro’s 2nd Chance. $7.00.” In France, a relevant
example of a price comparison is provided by a relatively recent Cour
d’appel de Paris case. The court decided that a television
advertising campaign for a telephone company comparing the
advertiser’s basic rate with his competitor’s price plan
was licit and, thus, in accordance with the new provisions of the
2001 Decree, a comparison may be made between non-identical but
interchangeable products or services.87
3. Shared Limits on Comparative Advertising
a. The Prohibition of False Comparative Advertising
Article L.121-8(1) C. con.
provides that the comparison must be truthful and should not be
likely to mislead consumers.88
In this respect, the current provisions of French law do not differ
from those of the 1992 Act,89
which themselves codified the courts’ longstanding practice of
prohibiting false comparative claims. Therefore, the provisions of
Article L.121-8(1) C. con. are usually interpreted and applied in the
same way as those of Article 10 of the 1992 Act.90
An illustration of a false comparative advertising case subsequent
to the enactment of the 2001 Decree is provided by the Cour de
cassation. The court held that it was misleading for a cosmetics
store to claim that it was selling certain products at the lowest
price on the market when those products were actually priced for less
Similarly, the Cour d’appel de Versailles recently held
an advertisement comparing the national rates of two telecoms
companies to be untruthful and likely to mislead consumers. The ad
defined the national rate as that applying to “calls made more
than fifty-two kilometers away” but the competitor referred to
in the advertisement charged some of those calls at the local rate.92
The same result may occur in the
United States, where false comparative advertising can be actionable
under both federal and state law. Section 43(a) of the Lanham Act
provides competitors with a federal cause of action for false or
The FTC may also intervene against false or deceptive advertisements
as a result of Section 5 of the FTC Act.94
At the state level, the Uniform Deceptive Trade Practices Act95
and the “little FTC Acts”96
are valuable tools against advertisers who engage in abusive
comparative advertising. Different state law causes of action can
also apply to comparative advertising, such as tortious interference
with economic advantage, negligence, and product or trade
Although the FTC, the courts,
and the states’ “little FTC Acts,” and false
advertising statutes define false comparative advertising in
different ways, they all take aim at advertising that deceives or
misleads consumers so as to influence their purchasing choices and
facilitate sales. U.S. courts enjoin the use of claims of
equivalence as soon as it is proved that the plaintiff’s
product is superior to the defendant’s. Summary
judgment was granted against a cigar maker who claimed to sell
identical copies of more expensive famous cigar brands and also
claimed to perform “a certain amount of work...
in an effort to duplicate the original,” because the
imitator did not duplicate “the particular region and regional
conditions” of the tobacco used in the original cigars.98
By contrast, superiority claims are held false if it can be shown
that the plaintiff’s good is equivalent or superior to the
defendant’s. For example, a television advertisement stating
“[t]ests prove Quaker State 10W-30 [motor oil] protects [engine
parts] better than any other leading 10W motor oil” was found
to be false and in violation of the Lanham Act. The advertised motor
oil did not ensure better protection of the engine parts and,
therefore, was not superior.99
b. The Prohibition of Confusing Comparative Advertising
Article L.121-9(3) C. con.
provides that the comparative advertisement “may not cause
confusion in the marketplace between the advertiser and a competitor
or between the advertiser’s trade marks...
and those of its competitor.”100
Non-confusion was already required under former French law and
courts usually prohibited comparative advertisements creating
confusion as infringing upon the competitor’s distinctive mark.
Thus, the tableaux de concordance practice is prohibited as
creating confusion in the buying public’s mind as to the source
of the products.101
This practice consists of lawfully creating copies of famous
products and of advertising them as equivalent to, but cheaper than,
the famous products. For instance, the Tribunal de grande
instance de Paris held that the use of a sign by a superstore
that was very similar to the logo registered as a trademark by the
National Council of Pharmacists Order was, under certain
circumstances, likely to create confusion.102
By contrast, courts expressly consider lawful claims which do not
confuse consumers. For example, a radio station (NRJ) brought an
action against another station (95.2) regarding the following
advertisement: “Hi NRJ. 95.2 FM is coming. Music OK. Info OK.
Cinema OK. Concerts OK. 6 months after its launch 95.2 already ranks
second on the FM frequency band.” NRJ argued that the ad was
creating a likelihood of confusion between the two radio stations.
The court held that there was no likelihood of confusion because of
the use of the verb “is coming,” which unmistakably
referred to 95.2.103
Similarly, U.S. courts have
declared as unlawful those comparative claims which are likely to
confuse the buying public as to the origin of the products or
services. In the well-known Charles of the Ritz Group v. Quality
King Distributors, Inc. case,104
the Southern District of New York, finding “a deliberate
attempt to have the consumer identify the Omni product as originating
from the same source as Opium,” preliminarily enjoined
defendant’s use of the slogan “[i]f you like Opium you’ll
U.S. courts also generally
prohibit use of comparisons between competing goods in advertising
where other aspects of either the advertisement or the advertiser’s
product’s packaging make the comparison confusing as to
For example, a claim containing a price list reproducing both the
advertiser’s and the competitor’s trademarks was held to
create a likelihood of confusion because use of the word “versus”
between the two trademarks was insufficient to allow consumers to
identify the source of each product.107
Hence, the above developments
tend to show that comparative advertising is now widely – if
not universally – accepted on both sides of the Atlantic,
insofar as it is neither false nor confusing. At this point of the
analysis, the two regimes seem very similar and in line with the
policy objectives of free competition and consumer welfare. Yet, in
spite of these shared objectives and outward similarities,
fundamental distinctions still exist between the French and U.S. laws
of comparative advertising.
III. Different Limitations on Comparative Advertising
U.S. and French laws take
different stands when it comes to either general and vague
comparisons or comparisons dealing with the value of a competitor’s
A. Vague and General Comparative Advertising
Contrary to U.S. puffery rules,
the French requirement of objectivity prohibits vague and general
comparative statements. This contrast between the two regimes may
well be explained by the fact that the two countries take different
consumer standards into account when judging advertising.
1. French Objectivity Requirement Versus U.S. Puffery Defense
Under article L.121-8(3) C.
con., the claim should “objectively compare...
relevant, decisive, verifiable and representative features of the
goods or services...”108
This requirement of objectivity has been judicially developed over
the years and was enacted into positive law by the 1992 Act. It
reflects both the courts’ and the legislature’s concern
with making comparative advertising a tool of information for
consumers about the features of the goods or services marketed.
Simply put, it means that the claim has to compare the
characteristics of the goods or services. Any vague, general, or
subjective statement is forbidden. Therefore, claims such as
“product X is better than product Y” are
unlawful and elements such as taste, flavor, smell, aesthetics,
smoothness, or sweetness cannot be compared. Comparative advertising
is, thus, de facto prohibited for goods such as perfumes and
French courts have always
strictly interpreted and applied the objectivity requirement. The
Tribunal de grande instance de Paris had to address the issue
of whether an advertisement stating that the firm Renault sold twice
as many cars in Germany as its competitor, Volkswagen, sold in
France, was lawful. The figures indicated in the ad were correct,
but the text of the ad conveyed the message that they were the result
of the inferior quality of Volkswagen cars. The court considered
that the advertisement was too general to constitute an objective
source of information, even though the plaintiff had not shown that
it was untrue.110
Likewise, a general claim stating that a magazine is superior to
another without providing any information on the competitor has been
prohibited by the Cour d’appel de Paris as failing to
meet the objectivity requirement.111
More recently, the Cour d’appel de Versailles held that
an advertisement for a telephone company claiming that the competitor
had raised its subscription fee but failing to provide information on
the background context for the raise lacked objectivity and,
therefore, was prohibited.112
The provisions of French law
regarding the objectivity requirement differ from the rules
prevailing under U.S. advertising law. U.S. law only prohibits false
statements of fact, as opposed to statements of opinions.113
A statement of fact is a “specific and measurable claim,
capable of being proved false or of being reasonably interpreted as a
statement of objective fact.”114
By contrast, when an assertion is “obviously a statement of
opinion,” it cannot “reasonably be seen as stating or
implying provable facts.”115
Such opinion-type statements are commonly referred to as “puffery.”
U.S. courts have traditionally ruled that vague and general
comparatives such as “better than” or “more than”
are not actionable as false comparative advertising because
reasonable consumers could not believe these statements to be
assertions of fact.116
As the Fifth Circuit explained, non-actionable puffery can take the
form of “a general claim of superiority over comparable
products that is so vague that it can be understood as nothing more
than a mere expression of opinion.”117
Generally, puffery has four characteristics: it is general and
it makes a claim that is immeasurable, unquantifiable or
it is presented as a subjective statement;120
and it is the kind of claim upon which consumers are unlikely to
Therefore, the language of
French law strongly contrasts with the terms used by U.S. courts to
determine whether a claim is puffery. Whereas comparative statements
are licit only if they concern “verifiable” qualities of
the products in France, immeasurable or unverifiable claims are
non-actionable puffery under U.S. law. Additionally, while
comparative claims must concern “relevant, decisive...
and representative” features of the goods or services concerned
under Article L.121-8(3) C. con., puffery is a general and vague
statement under U.S. law. In essence, while French law requires the
advertisement to be useful to consumers, U.S. law encourages
comparisons which are of less use to consumers.
Pizza Hut, Inc. v. Papa
John’s Int’l, Inc.122
offers a relevant example of what U.S. law considers non-actionable
puffery. Papa John’s ran a series of comparative
advertisements specifically referring to Pizza Hut and containing the
slogan “Better Ingredients. Better Pizza.” The Fifth
Circuit determined that the slogan “epitomizes the exaggerated
advertising, blustering, and boasting by a manufacturer upon which no
consumer would reasonably rely” and declared that “it is
difficult to think of any product or any component of any product, to
which the term ‘better’, without more, is quantifiable.”123
Such a claim would undoubtedly be prohibited by French courts as
general and subjective.
Similarly, it is worth noting
that the French objectivity requirement has the effect of prohibiting
the use of “[i]f you like [them], you’ll love [us]”
advertisements which are widely used in the United States. In Saxony
Products, Inc. v. Guerlain, Inc.,124
the Ninth Circuit denied injunction against defendant’s use of
plaintiff’s famous perfume trademark, Shalimar, in the slogan
“[i]f you like Shalimar, you’ll love Fragrance S.”
The “like/love” advertising format, which obviously does
not concern “relevant, decisive, verifiable and representative”
features of the product and undoubtedly involves a subjective
statement, could be prosecuted on the ground of the objectivity
provisions of Article L.121-8(3) C. con..
2. Different Consumer Standards
The above analysis of the French
objectivity requirement and U.S. puffery rules brings to light two
different positions regarding consumers’ behavior toward
advertising. Although consumer information is the primary concern of
U.S. courts, they make certain assumptions about consumer credulity.
Consumer welfare remains the criterion, or the relevant policy norm,
but their decisions rest on the premise that the purchasing public
is, for the most part, rational, reasonable, and sophisticated enough
not to believe that vague, general, and subjective statements are
literally true. Faced with puffery ads, U.S. consumers are presumed
capable of not taking all advertisements seriously and understanding
their source and limitations.
Hence, the U.S. model consumer
to judge deception is the average or reasonable consumer of the
relevant product or service.125
A 1983 FTC Policy Statement on Deception ruled that a practice is
deceptive if it is likely to mislead “a consumer acting
reasonably in the circumstances.”126
This reasonable consumer standard is also applied by the courts. In
Federal Trade Commission v. Security Rare Coin & Bullion
the Eighth Circuit held that “[t]o satisfy the reliance
requirement in actions brought under section 13(b) of the Act, the
FTC needs merely show that the misrepresentations or omissions were
of a kind usually relied upon by reasonable and prudent
Advertisements are also evaluated from the perspective of the
reasonable consumer under the Lanham Act. 129
Conversely, by requiring the
comparison to “objectively compare relevant, decisive,
verifiable and representative features” of the goods or
services, the French legislation seems to implicitly take a different
type of consumer into account: the “credulous, ignorant and
French courts have confirmed the legislature’s position by
using the least able consumer approach to judge the legality of
advertising claims. Certain commentators have correctly pointed out
[i]nstead of the
often-quoted “bon père de famille” –
a highly attentive consumer who is able to critically evaluate
information contained in an advertisement and to avoid being easily
deceived – the new French practice rather takes the
“consommateur moyen” described as “much more
vulnerable and credulous” as a guideline when enforcing the
relevant provisions of the Code de la Consommation.131
Several elements distinguish the
reasonable consumer from the credulous purchaser. The reasonable
consumer is the attentive, mature, and critical one who does not rely
solely on the advertisement. On the contrary, he “critically
perceives the information given, carefully evaluates and analyzes its
content and meaning and finally bases a rational decision on such
However, he is not a knowledgeable, sophisticated, or
and the fact that consumers are not always capable of understanding
all relevant facts is considered when judging advertising.134
Additionally, the reasonable consumer exercises common sense and
does not necessarily believe and rely on all statements contained in
He is the average target consumer.136
By contrast, the credulous consumer is a vulnerable, inattentive,
uncritical, trusting, non-discerning, unrealistic, and
unsophisticated person. He does not consult information available
about the product before the purchase and only relies on the
advertisement. In short, he attaches significance to any vague and
general claim and is incapable of understanding the ad as a mere
statement of opinion.
The U.S. reasonable consumer
approach is more convincing. Consistent with the objectives of free
competition and consumer welfare, the reasonable person approach
allows use of comparative advertising within broad limits, while
ensuring protection and information of the buying public as a whole
(since puffery claims are those upon which reasonable consumers are
not likely to rely). The Seventh Circuit has clearly explained why
going further than the reasonable consumer standard would lessen
consumer welfare. “Many consumers are ignorant or inattentive,
so some are bound to misunderstand no matter how careful a producer
is. If such a possibility [of confusion] created a trademark
problem, then all comparative references would be forbidden, and
consumers as a whole would be worse off.”137
Conversely, the credulous
consumer standard or, more generally, the objectivity requirement, is
a considerable obstacle to the development of comparative advertising
in France. It has the effect of prohibiting a large number of
comparative advertisements that are allowed by U.S. standards, such
as general claims of superiority, “like/love” ads, or
statements comparing the taste or smell of products. In practice,
companies contemplating comparative advertising campaigns in France
are deterred from using this advertising format. They have to be
extremely cautious when using comparative ads in order to avoid
having the advertising campaign in which they have expended great
efforts, skills, and money, prohibited by the courts. To this
extent, the objectivity requirement acts as a brake on the use of
comparative advertising. Ultimately, this limits the information
that may be communicated to the consuming public.
B. Comparative Advertising Dealing with the Value of Another’s Trademark138
By contrast with the United
States, and resting upon a different conception of property
ownership, France expressly prohibits not only comparative
advertisements exploiting the value of a rival’s trademark, but
also those attacking that trademark.
1. Comparative Advertising Exploiting the Value of a Trademark
The French prohibition of
comparative advertising exploiting the value of a trademark finds
expression in two sets of provisions which both restate case law
developed over many years. Firstly, Article L.121-9(1) C. con.
states that a comparative claim “may not take unfair advantage
of the reputation of a trade mark... of a
Secondly, under Article L.121-9(4) C. con., the advertisement “may
not present goods or services as an imitation or replica of goods or
services bearing a protected trademark...”140
These provisions encompass seemingly similar types of
advertisements. However, while Article L.121-9(1) may be used as a
ground to prohibit any comparison capitalizing on the reputation of a
trademark, Article L.121-9(4) specifically prevents comparisons of
the following type: “Product X is a copy of and has the
same quality as product Y but is half the price of the
French courts have prohibited
such claims for some time. For example, advertisements presenting
the advertised product as being of the same “type” or
“kind” as the competitor’s trademark are unlawful.141
The advertiser is regarded as capitalizing on the trademark owner’s
goodwill and improperly benefiting from his reputation. Thus, the
Tribunal de Grande Instance de Bourges prohibited an
advertisement for “style Barbour” hunting clothes, on the
grounds that the advertiser was wrongfully taking advantage of the
“Barbour” trademark owner’s reputation.142
Particularly interesting is the
prohibition of the so-called tableaux de concordance. This
practice, commonly referred to as “knock-off” in the
United States, is frequently used in the perfume industry and is
prohibited in France for infringing on the competitor’s
trademark. The tableaux de concordance practice can be
described as follows: perfume manufacturers lawfully create perfumes
very similar to others’ famous perfumes. Then, they advertise
their perfumes as being equivalent to, but cheaper than, the famous
perfumes. Courts do not prohibit the manufacture of perfumes similar
to other perfumes.143
They only prohibit the advertisement of these perfumes as similar to
the famous ones. One hundred and thirty eight court decisions
prohibited such advertisements between 1981 and 1991.144
According to French scholars, several reasons justify the
prohibition of the tableaux de concordance. First, the
advertiser would unfairly capture the trademark holder’s
potential customers. Second, the trademark’s fame would be
tarnished. Finally, the use of another’s trademark in tableaux
de concordance would create a serious threat to the
distinctiveness of the trademark and would raise the risk of making
the words of which the mark is composed into a generic term.145
The French prohibition of
comparisons exploiting the value of a trademark contrasts with the
U.S. dilution-by-blurring theory which expressly exempts comparative
advertising. Blurring, which is the “traditional” or
“classic” form of dilution,146
occurs “when use of a mark by others generates awareness that
the mark no longer signifies anything unique, singular or particular,
but instead may (or does) denominate several varying items from
The blurring theory is embodied in Section 43(c) of the Lanham Act.148
Most state statutes also contain dilution-by-blurring provisions.149
Typically, use of a competitor’s mark in advertising is
blurring when the consumer, although he knows that the competitor did
not produce the advertised good, mentally associates the competitor’s
mark with the advertiser’s products upon viewing the
competitor’s mark in the context of the comparative
advertisement. Since, in the future, the consumer will think not
only of the competitor’s products but also of the advertiser’s
goods upon viewing the competitor’s mark, the mark’s
distinctiveness has been blurred.
At first blush, the blurring
theory seems to endanger comparative advertising. Positive
comparative advertising which is usually “used to participate
in the good reputation of a competitor’s [mark]”150
and, therefore, often creates an association in the public’s
mind between the advertiser’s products and his rival’s
marks is particularly threatened. Strictly applied, the blurring
theory would provide competitors with a powerful weapon to prevent
most of their rival’s equivalence and positive comparative
claims. For that reason, comparative advertising may be invoked as a
defense in dilution cases. Section 43(c)(4)(A) of the Lanham Act151
states that “[f]air use of a famous mark by another person in
comparative commercial advertising or promotion to identify the
competing goods or services of the owner of the famous mark”
shall not be actionable under the dilution section of the Act.152
The above provisions only exempt “fair” use of another’s
mark in comparative advertising. For example, non-trademark use of
one’s competitor’s mark (i.e., use of the mark in a
descriptive sense for the sole purpose of identifying the
competitor’s product) is considered “nominative fair
This descriptive use limitation to the dilution theory allows
comparative advertising to be exempted from blurring violation to a
large extent. U.S. courts, whether they deal with federal or state
law, tend to authorize comparative advertising where the risk of
blurring is minimized. In Deere & Co. v. MTD Products, Inc.,154
the Second Circuit had to address the issue, arising under the New
York anti-dilution statute, of “whether an advertiser may
depict an altered form of a competitor’s trademark to identify
the competitor’s product in a comparative ad.”155
The court, after declaring that “[s]ellers of commercial
products may wish to use a competitor’s mark to identify the
competitor’s product in comparative advertisements,”
ruled that the plaintiff’s distinctiveness of the mark was not
likely to be blurred since its use by defendant posed “slight if any
risk of impairing the identification of Deere’s mark with its
The advertisement was nonetheless enjoined on the ground of
More specifically, the French
prohibition of comparisons presenting goods as copies of products
bearing a trademark set out in Article L.121-9(4) C. con. is contrary
to what might be called the U.S. “right of informing rule.”
Under U.S. law, “if a seller has the right to copy public
domain features of his competitor’s goods, then, as a
corollary, he must have the right to inform the public of this
The principle is that the one who legally copied a competitor’s
product can truthfully tell the purchasing public of the similarities
between his product and the original. The rule rests on the
proposition that prohibiting use of a competitor’s trademark
for the sole purpose of identifying the competitor’s product
would have the effect of “extend[ing] the monopoly of the
trademark to a monopoly of the product.”159
As early as 1910, in Saxlehner v. Wagner,160
the Supreme Court declared that a seller of mineral water had the
right to refer to a competitor’s trademark to identify the
competitor’s product and truthfully inform consumers of the
close identity between the water he was selling and that of the
The rule has been followed since that 1910 mineral water case. In
the Dior case,162
the Second Circuit declared:
The Lanham Act does
not prohibit a commercial rival’s truthfully denominating his
goods a copy of a design in the public domain, though he uses the
name of the designer to do so. Indeed it is difficult to see any
other means that might be employed to inform the consuming public of
the true origin of the design.163
Similarly, in Calvin
Klein Cosmetics Corp. v. Lenox Laboratories, Inc. ,164
the Eighth Circuit held that use of the trademark “Obsession”
in a claim for a perfume advertised as “our version of
Obsession” was lawful. The court explained that “the
underlying rationale is that an imitator is entitled to truthfully
inform the public that it has produced a product equivalent to the
original and that the public may benefit through lower prices by
buying the imitation.”165
Thus, using a competitor’s trademark to truthfully inform
consumers of the advertiser’s cheaper versions of famous
trademarked goods would be an act of unfair competition under French
law, but would certainly be legal under U.S. advertising law.
2. Comparative Advertising Attacking the Value of a Trademark
Turning to the issue of
disparagement, it is worth recalling that in France, prior to 1992,
comparative advertising was considered synonymous with disparagement
and usually prohibited as such by courts.166
The 1992 Act did not contain any express or specific provision on
disparagement but only generally required the advertised comparisons
to be “fair.” Many comparisons were prohibited as
disparaging the competitor’s mark on the ground of this
fairness requirement. Competitors also attacked comparisons
criticizing their marks, products, or services using the unfair
competition notion, which appeared to be a very powerful weapon in
Today, Article L.121-9(2) C. con. is more explicit than the 1992
Act, as it provides that the comparison cannot “discredit or
denigrate trademarks... of a competitor.”168
Judicial precedents are particularly relevant in interpreting this
provision. An analysis of the precedents shows that the distinction
between reprehensible disparagement and authorized criticism is a
fuzzy one. Surprisingly, disparagement is often found even in the
absence of either a false or a misleading statement about the
competitor’s mark or desire to damage his reputation.169
It seems that where the critical comparison relates to facts that
are proved accurate, it should be accepted. But French courts take a
different stand. For example, a merchant cannot display in his store
a court decision passed against his rival.170
Likewise, a coffee manufacturer may not criticize the manufacturing
process of a competitor, regardless of whether that critic has
sufficient grounds to do so.171
In addition, disparagement not only occurs when the advertiser
expressly criticizes his competitor, but also where, for example, he
reproduces certain elements of his competitor’s recent
advertisement such as an animated robot.172
Hence, French courts have a strong tendency to resort to
disparagement to prohibit critical comparisons in advertising: “if
the exaggeration which is inherent in any advertisement does not in
itself break the rules of fair competition, the [superiority claim]
cannot be allowed where the [statement of superiority] ends up...
depriving competitors of the same qualities.”173
As a result, advertisers contemplating comparative campaigns in
France should avoid criticizing their competitors in order to
maximize their chances of saving their advertisements from
The French disparagement theory
must be compared to the U.S. trademark disparagement theory, more
commonly referred to as “tarnishment,” which is another
form of dilution. Typically, tarnishment occurs where an
unauthorized use of a trademark injures the owner’s business
As the Second Circuit stated,
generally arises when the plaintiff’s trademark is linked to
products of shoddy quality, or is portrayed in an unwholesome or
unsavory context likely to evoke unflattering thoughts about the
owner’s product. In such situations, the trademark’s
reputation and commercial value might be diminished because the
public will associate the lack of quality or lack of prestige in the
defendant’s goods with the plaintiff’s unrelated goods,
or because the defendant’s use reduces the trademark’s
reputation and standing in the eyes of consumers as a wholesome
identifier of the owner’s products or services.175
In contrast with blurring, which only dilutes the distinctive value of
the mark, tarnishment also degrades its positive associational value.
In other words, “[t]he sine qua non of tarnishment is a
finding that plaintiff’s mark will suffer negative associations
through defendant’s use.”176
It must be noted that the federal anti-dilution statute does not
expressly refer to tarnishment and a discussion exists as to whether
it encompasses dilution by tarnishment.177
In any event, U.S. courts dealing with federal law expressly
recognize and apply that theory. Most states also clearly and
unambiguously consider tarnishment as a form of dilution.178
which was originally limited to “unsavory” or
“unwholesome” uses of a trademark, such as those
associating the mark with sexual, obscene, or illegal activities, has
been expanded by courts to encompass all “unflattering”
In Deere, the Second Circuit addressed a commercial that used
“a static image of a graceful, full-size deer –
symbolizing [plaintiff’s] substance and strength – and
portray[ed], in an animated version, a deer that appear[ed] smaller
than a small dog and scamper[ed] away from the dog and a lawn
tractor, looking over its shoulder in apparent fear.”180
Although it observed the Deere mark was not used in connection with
sexual activity, obscenity, or illegal activity, the court prohibited
the ad as damaging the mark by “alteration …
accomplished for the sole purpose of promoting a competing product
The court has declared that “[s]ellers of
commercial products who wish to attract attention to their
commercials or products and thereby increase sales by poking fun at
widely recognized marks... risk diluting the
selling power of the mark that is made fun of.”
A parallel may be established
between the Deere case and a very recent Cour d’appel
de Paris case involving a television commercial for Orangina, a
sugar-free soda. The commercial presented a group of people dressed
up as sugar lumps (the “sugar” character) who were
refused entrance to a nightclub, while a tall and slender person
wearing an orange outfit (the “Orangina” character) could
easily get in. The court found the sugar character was presented in
a ridiculous light because of its cramped look, begging attitude, and
eventual failure to get in. This tarnished the image of the sugar
product without adding anything to the strength of the Orangina
message. The commercial was, therefore, held to be disparaging
toward the sugar product.183
Just as blurring threatened positive and equivalence claims, tarnishment
is a potentially important restriction to negative and superiority
comparative claims. “Interpreted literally, [it] could easily
be used to prevent many forms of parody in comparative advertising.”184
However, both U.S. courts and the Federal Dilution Act have limited
application of the tarnishment theory when it comes to comparative
advertising. As mentioned above, section
the Lanham Act exempts fair comparative advertising from dilution
violation. In addition, the Deere court itself has expressly
established limits to the tarnishment form of dilution in the area of
comparative advertising, deciding that use of a trademark in
comparative ads may be authorized as long as the trademark is not
Tarnishment would only occur where alterations of a mark “are
made by a competitor with both an incentive to diminish the
favorable attributes of the mark and an ample opportunity to promote
its products in ways that make no significant alteration.”186
A good illustration of U.S. courts’ willingness to limit
application of the tarnishment theory where comparative claims are
involved is provided by case law considering lawful use of a
competitor’s mark to advertise knock-off products.187
they have developed a similar theory to protect competitors against
unscrupulous advertisers, U.S. and French laws do not handle the
theory the same way when it comes to comparative advertising. French
law extensively uses the disparagement notion to prohibit a wide
range of critical comparisons. By contrast, the U.S. approach is
much more moderate, as it takes into account the degree of the harm
to the competitor and the advertiser’s incentive to injure his
rival’s goodwill in order to decide whether the criticism
should be prohibited.
3. Different Conceptions of Property Rights in Trademarks
Trademark rights have a “less
in the United States than in France. This may explain the existence
of different regimes as discussed in subsections (1) and (2) above.
French law places great importance on protecting the trademark
owner’s reputation and goodwill, the idea being that by
investing intellectual and financial resources in the trademark
itself, the owner is building “a symbol of his reputation”189
and creating “the selling power of his trademark.”190
The owner ascribes to the product an attractive image that will
appeal to consumers. Enterprises spend great amounts of money,
effort, skill, and ability to develop their marks and to get the
purchasing public to recognize them. The outcome may be that
products are sold regardless of such characteristics as quality or
price, because the reputation of the mark they bear is sufficient
alone to induce customers to buy them. These reasons have led French
academic researchers, courts, and legislative authorities to conclude
that the function of a trademark is not only to distinguish between
different origins, but also to embody the owner’s reputation
and goodwill that become the “protectible feature[s] of [the]
The Court of Justice of the European Communities has also expressly
recognized that “in relation to trademarks, the specific
subject-matter of the industrial property is intended to protect [the
trademark owner] against competitors wishing to take advantage of the
status and reputation of the trade mark ….”192
U.S. law also accords weight to
the owner’s investment in his mark within the particular use of
the blurring and tarnishment theories, but the policy goal of freedom
of competition and consumer welfare prevails insofar as comparative
advertising is concerned. Representative of this idea is the
language used by Judge Browning in the “right of informing”
Judge Browning first explained that the anticompetitive consequences
of the protection of the trademark owner’s reputation and
goodwill “have little compensating benefits.”194
The appeal of highly advertised trademarks, although it protects
firms already on the market, constitutes a barrier to the entry of
newcomers into the marketplace. In turn, high barriers to entry tend
to “produce ‘high excess profits and monopolistic output
restriction’ and ‘probably... high and
possibly excessive costs of sales promotion.’”195
Judge Browning then rebutted appellees’ argument that
when great resources have been invested to develop the trademark’s
the competitor should be prohibited from free riding on the
reputation and goodwill embodied in that trademark.197
He ruled that a “large expenditure of money does not in itself
create legally protectable rights. Appellees are not entitled to
monopolize the public’s desire for the unpatented product, even
though they themselves created that desire at great effort and
A closely related concern
explains why U.S. dilution law explicitly exempts comparative
advertising: consumers may not be deprived of valuable and accurate
information about either the similarities of comparable products or
the defects of certain goods available on the market under the
pretence of protecting the trademark’s selling power. As one
commentator stated, “[i]nformative comparative advertising
conveys useful information, and furthers the public interest in
well-informed consumer decisions and wiser allocation of
resources... This form of comparative
advertising cannot be suppressed under antidilution regulation.”199
The French position seems
unconvincing. Although the trademark owners’ substantial
investment in their marks has to be protected in principle, when it
comes to comparative advertising, the anticompetitive consequences of
could outweigh its beneficial effects. Indeed, the only purpose for
preserving trademark values, other than the source identification
function, is to protect the investment of the trademark owner who,
therefore, is the one and only party benefiting from such expanded
trademark protection. The weight accorded to those trademark values
is, therefore, surprising since the traditional concern of protecting
the competitor welfare, i.e., the trademark owner’s, has now
been officially replaced by the policy goals of maximization of
competition and consumer welfare.201
In fact, the French position confuses unfair competition with free
competition. Authorizing advertisers to criticize or exploit the
value of others’ trademarks in comparative advertising
certainly makes competition vigorous (i.e., free) but not necessarily
deceptive (i.e., unfair). There is no clash between comparative
advertising and fair competition as long as false and confusing
claims are prohibited.202
However, under the pretence of preserving fair competition in the
marketplace, the provisions of Articles L.121-9(1), L.121-9(2) and
L.121-9(4) adversely affect free competition and consumer welfare.
Particularly subject to
criticism is the prohibition of comparative advertising that takes
advantage of the reputation of a trademark. In most comparative ads,
and specifically in equivalence claims, the primary purpose of the
comparison itself is to benefit from the reputation and goodwill that
the competitor has developed in his mark. Prohibiting claims that
take advantage of the reputation of the rival’s trademark is
therefore giving competitors a powerful device to sue any advertiser
citing their mark. In particular, owners of famous trademarks may
easily convince courts that the ad aims at capitalizing on their
goodwill. Such a provision seems all the more useless since French
courts have a great propensity to broaden the protection granted in
the unfair competition area in order to prohibit any reprehensible
behavior, including behavior infringing trademark owners’
reputation and goodwill.203
As a result, by prohibiting comparative advertisements from taking
advantage of the reputation of a competitor’s trademark,
Article L.121-9(1) C. con. is not only encouraging competitors to sue
the advertiser, but also leading courts to prohibit comparative
advertising to a large extent. Such a provision can be analyzed as a
de facto prohibition of comparative claims involving famous
Similar criticism can be brought
against the provision inserted into the French Consumer code by the
2001 Decree, making it unlawful to disparage a competitor’s
mark. It provides French judges with another weapon, in addition to
the unfair competition laws, to prohibit competitors’
criticisms in advertising. This may encourage courts to prevent such
claims even more than they already do. The possible drifting off of
the new anti-disparagement provision is therefore obvious: combined
with the courts’ tendency to broadly apply the unfair
competition notion to bar critical comparisons, it may lead them to
enjoin any superiority and negative claim. Yet, consumers have a
strong interest in being informed of the defects of certain products
and of the superior properties of others. The U.S. approach is,
therefore, more persuasive. While concerned with granting the
trademark owners’ investments a certain protection against
exaggerated, unsubstantiated, or malicious criticisms, it
protects reasonable and temperate criticisms made for informational
Overall, the U.S. comparative
advertising legal regime is less restrictive and does a better job
than the French one in preserving the policy objectives of consumer
welfare and free competition. Although both countries authorize
truthful and non-confusing comparative advertising, French law places
additional heavy restrictions on the use of this marketing tool.
Yet, the prohibition of false and confusing claims seems sufficient
to prevent abuses.
This contrast results from
different consumer standards and trademark values in each country.
The great weight accorded to trademark values other than the source
identification function and the use of the credulous consumer
standard under French law undoubtedly favor the interest of the
individual competitor advertised against to the detriment of
competition in the marketplace. This is rather surprising, given
that competitors facing comparative advertisements are far from being
defenseless, as they usually are the ones with the strongest market
positions. In practice, they have the incentives and necessary
resources to retaliate with their own advertising campaigns and
answer their rival’s comparative claim.204
Therefore, the negative consequences of the “over-protection”
of competitors referred to in comparative advertisements –
namely the impairments to consumer welfare and free competition –
outweigh its benefits – the established competitor welfare.
The rigidity of the French regime is also questionable in that it
generally deters advertisers from using any kind of comparative
advertisement, especially since competitors rarely miss the
opportunity to bring suit against rivals to stop or prevent the
relevant advertising campaign. Moreover, an efficient comparative
advertising legal regime could play a small, yet positive, role in
spurring consumer consumption in order to drive the economic recovery
of France and other European Union Member States.
Some may justify the contrast
between the two regimes by suggesting that French and U.S. consumers
have different expectations from advertising. Certain commentators
have explained that contrary to the U.S. public, French consumers do
not have rational expectations in the area of commercial
communication and prefer entertaining, rather than informative,
advertising. Comparative advertising would, therefore, not be an
effective marketing tool in France because of its informational
However, this argument is irrelevant in the discussion over the
conditions of legality of comparative advertising. Only companies
and advertisers can best decide whether comparative advertising is
the best means of praising their products; the legislator should
always allow them the possibility of using such a device.
Is a reconciliation of the U.S.
and French comparative advertising legal regimes conceivable in spite
of the existing outstanding differences? At first glance, given the
natural tendency that French judges have had for many years to limit
the use of this marketing format, it seems that the two regimes will
continue to be governed by very different rules in the coming
decades. However, it must be borne in mind that the French regime
now results from the implementation of the 1997 European Directive.
The Court of Justice of the European Communities will certainly play
an important role in determining of the boundaries of comparative
advertising over the next few years since national judges, in order
to ascertain compliance of their national legislation with the
Community law, will ask for clarification on certain aspects of the
1997 European Directive. So far the Court of Justice’s
decisions have been encouraging, from the comparative advertisers’
It is, therefore, hoped that French judges will follow this trend
and remove the legal obstacles which stand in the way of comparative
advertising so as to reconcile French and U.S. law of comparative
The author received a Masters
Degree in Trade Regulation from New York University School of Law in
2003 and a D.E.S.S. in Intellectual Property Law from Paris II
Panthéon-Assas University in 1999. She is a member of the New
York Bar and is currently working in London with the law firm Wragge
& Co LLP. The author is most grateful to Professor Rebecca
Tushnet from the New York University School of Law Faculty for her
support and encouragement to publish this article and for providing
feedback on the draft version of this article.
de l’Audiovisuel, Comment
se fait-il que l’on voit apparaître des messages de
publicité comparative à la télévision?,
available at http://www.csa.fr/outils/faq/
faq.php (last visited Jan. 6, 2005).
E. Barry, Comparative Advertising: What Have We Learnt in Two
Decades?, 33(2) J. Advert. Res. 19, 20 (1993); Roslyn S.
Harrison, The Law of Comparative Advertising in the United States
and Abroad, in Global Trademark & Copyright 1995:
Management & Protection 218 (Siegrun D. Kane & Mark A.
Steiner, eds., 1995).
Donthu, A Cross-Country Investigation of Recall of and Attitude
Toward Comparative Advertising, 27(2) J. Advert. 111,
Direction Générale de la Consommation, de la
Concurrence et de la Répression des Fraudes (DGCCRF), Rapport
relatif a l’exercice de la publicité comparative,
e.g., André Bertrand, Peut-on vraiment légaliser la
publicité comparative?, 38 Revue du Droit de la Propriété
Intellectuelle 23 (1991); Monique Luby, Propos critiques sur la
légalisation de la publicité comparative, D. 1993
chron. 53; Stephen Nye, In Defense of Truthful Comparative
Advertising, 67 Trademark Rep. 351 (1977); Albert Robin &
Howard B. Barnaby, Jr., Comparative Advertising: A Skeptical
View, 67 Trademark Rep. 358 (1977).
E. Sterck, The Law of Comparative Advertising: How Much Worse Is
“Better” than “Great,” 76 Colum. L. Rev.
80, 80-81 (1976).
at 81 n.6.
Bodewig, The Regulation of Comparative Advertising in the
European Union, 9 Tul. Eur. & Civ. L.F. 179, 187 (1994).
policy goals of competition and consumer welfare are closely
connected. See, e.g., Spectrum
Sports, Inc. v. McQuillan, 506
U.S. 447 (1993) (stating “‘[a]nticompetitive’ has
a special meaning: it refers not to actions that merely injure
individual competitors, but rather to actions that harm the
competitive process, a process that aims to bring consumers
the benefits of lower prices, better products, and more efficient
production methods.”); Interface Group v. Mass. Port Auth.,
816 F.2d 9, 10 (1st Cir. 1987) (finding
policy of competition is designed for the ultimate benefit of
consumers rather than of individual competitors, and a consumer
has no interest in the preservation of a fixed number of competitors
greater than the number required to assure his being able to buy at
the competitive price.”) (citation omitted) (emphasis added);
see also Jean Calais-Auloy & Franck Steinmetz, Droit de
la Consommation 15 ¶ 16 (Dalloz, 4th ed. 1996) (asserting that
the rules prohibiting aggressive business practices belong to both
the consumer law area and the competition law field and that, more
generally, almost all competition law rules have consequences which
may affect consumers and vice versa).
the United States, the right to compete is regarded as the
“fundamental premise of the free enterprise system.”
(Third) of Unfair Competition § 1 (1995). Courts often
state that the main purpose of antitrust law is to promote free
competition. See, e.g., Gordon v. N.Y. Stock Exch.,
Inc., 422 U.S. 659 (1975) (holding that the sole aim of antitrust
legislation is to protect competition); Natrona
Serv., Inc., v. Cont’l Oil Co., 598
F.2d 1294 (10th Cir. 1979) (declaring
laws were enacted for the protection of competition, not for the
protection of competitors); 1 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 1:1
(West Group, 4th ed. 2003) (citation and footnotes omitted). In
France, the principle of freedom that governs business life has its
roots in the so-called 1791 “loi d’Allarde.” See
Ordonnance no. 86-1243 du 1er décembre 1986 relative à
la liberté des prix et de la concurrence, art. 1 [Decree
No. 86-1243 of Dec. 1 1986 Concerning Freedom of Prices and
Competition] (establishing the principle of competition), available
(last visited Jan. 6, 2005). European law has also made the principle of
competition an obligation that compels Member States. See, e.g.,
Treaty Establishing the European Community, Mar. 25, 1957, art.
4(1), available at
Sherman Hanna, The Economics of Information, at
http://www.hec.osu.edu/ people/shanna/741/stigler.pdf (last visited
Jan. 6, 2005); see also Andrew B. Whinston et
Al., The Economics of Electronic
Commerce 256 (Macmillan Technical Publishing 1997).
McCarthy, supra note 14, § 2:5 (quoting F.T.C. Office of
Policy Planning, F.T.C. Policy Planning Issues Paper: Trademarks,
Consumer Information and Barriers to Competition 22 (1979) (The
Al., supra note 15, at 256.
e.g., 4 McCarthy, supra note 14, § 25:52 (stating
“[c]omparative advertising … is ‘highly
beneficial to consumers’ and may convey to them valuable
information”) (quoting August Storck K.G. v. Nabisco, Inc., 59
F.3d 616, (7th Cir. 1995)); Lee Goldman, The World’s Best
Article on Competitor Suits for False Advertising, 45 Fla. L.
Rev. 487, 491-92 (stating “[i]nformal advertising increases
buyer knowledge about the price, quality and benefits of various
products, thus reducing consumers’ search cost and the total
costs to consumers of transacting business. Truthful advertising not
only produces lower effective prices, but induces sellers to improve
the quality of their goods.”).
R. BeVier, Competitor Suits for False Advertising Under Section
43(a) of the Lanham Act: A Puzzle in the Law of Deception, 78
Va. L. Rev. 1, 14 (1992). It should be pointed out that U.S. law
distinguishes different kinds of falsity. First, false express
claims are stated literally in the advertisement. See,
e.g., Rhone-Poulenc Rorer Pharms., Inc. v. Marion Merrell Dow,
Inc., 93 F.3d 511, 516 (8th Cir. 1996) (finding an ad literally
false where it incorporates the pictures of two identical gas pumps
and two identical airline tickets with different prices, together
with the slogan “Which one would you choose?,” because
the ad claims that, like the pumps or the tickets, the advertised
drug is equivalent to, but cheaper than, the competitor’s
drug). Second, a claim may also be false by necessary implication
when the claim that is necessarily implied by the ad makes it false
on its face. See, e.g., Castrol, Inc. v. Pennzoil Co.,
987 F.2d 939, 941, 946 (3d Cir. 1993) (finding a comparison by
necessary implication where the advertised motor oil was said to
provide “longer engine life and better engine protection”
because, even though the competitors subject to the comparison were
unnamed, the ad implicitly identified what competitors it was
“longer” and “better” than). Finally, false
implied claims are those that, although not literally untrue,
deceive or mislead consumers by their implications. See, e.g.,
Am. Home Prods. Corp. v. Johnson & Johnson, 654 F. Supp.
568, 588 (finding misleading by its implications a claim that
hospitals recommend “acetaminophen, the aspirin-free pain
reliever in Anacin-3, more than any other pain reliever,”
because hospitals were recommending Tylenol, which contains
acetaminophen, but the ad conveyed the message that hospitals were
e.g., BeVier, supra note 19, at 14; Jeffrey
P. Singdahls, The Risk of Chill: A Cost of the Standards
Governing the Regulation of False Advertising Under Section 43(a) of
the Lanham Act, 77 Va. L. Rev. 339, 340 (1991).
supra note 19, at 14.
examples of confusing advertisements, see infra notes 102-05
and accompanying text.
v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968) .
at 566 (footnote omitted).
McCarthy, supra note 14, § 1:1 (citation and footnotes
omitted). U.S. courts regularly declare that consumer welfare is the
guiding objective in the competition law area. See supra
I. C. Thomson, Problems of Proof in False Comparative Product
Advertising: How Gullible is the Consumer?, 72 Trademark Rep.
385, 386 (1982).
Suzanne B. Conlon, Comparative Advertising: Whatever Happened to
“Brand X”?, 67 Trademark Rep. 407, 407 (1977).
402 F.2d 562. See infra note 86, and accompanying text, for a
description of the facts of the Smith case.
C.F.R. § 14.15 (2004).
C.F.R. § 14.15(c).
C.F.R. § 14.15(b).
e.g., Barry, supra note 2, at 19; Donthu, supra
note 3, at 111; Thomson, supra note 26, at 387.
Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618 (7th Cir. 1995). See
also Deere & Co v. MTD Prods., Inc., 41 F.3d 39, 44 (2d
Cir. 1994) (stating “as long as the mark is not altered
[comparative advertising] serves the beneficial purpose of imparting
factual information about the relative merits of competing
Storck K.G., 59 F.3d at 617.
Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 500 (8th
infra Part II.B.3. and Part III.
Antoine Pirovano, Publicite comparative et protection des
consommateurs, D. 1974 chron. 279.
Bodewig, supra note 8, at 190.
Luby, supra note 5, at 12-18. See generally
Pirovano, supra note 38 (analyzing extensively and
criticizing previous case law which prohibited comparative
advertising as impairing the competitor’s interest).
e.g., CA Paris, Dec. 10, 1963, Ann. Prop. Ind. 1964, 67
(considering unlawful the comparison with one’s competitor’s
products as likely to capture the competitor’s potential
customers), cited in Pirovano, supra note 38.
e.g., CA Douai, Feb. 16, 1973, J.C.P. 1973, IV, 273 (holding
unlawful a shopkeeper’s act of placing in his window a
competitor’s advertisement showing the competitor’s
higher prices together with a claim stating “[c]ompare and
make up your mind before you buy”); Pirovano, supra note
38, citing CA Paris, June 7, 1973, 619 (directing defendant to pay
10,000 Francs damages for distributing a circular to the trade
comparing defendant’s prices with plaintiff’s prices).
e.g., CA Paris, June 6, 1964, D. 1964 somm., 103 (holding that
defendants cannot inform the buying public that the methods used by
their competitors do not comply with the regulation enacted by the
public health ministry).
e.g., Pirovano, supra note 38, citing Cass. com., July
19, 1973, D. 1973, 587; CA Paris, Jan. 24, 1967, Ann. Prop. Ind.
1967, 112 (ruling that one cannot compare his products to his
competitor’s products in ways that put the competitor at a
disadvantage, even when scientific evidence supports the
comparison); Trib. civ. Seine, Nov. 5, 1949, Ann. Prop. Ind. 1950,
42 (holding unfair an ad stating that one’s lozenges are more
effective that one’s competitor’s); Trib. civ. Seine,
Nov. 14, 1925, Ann. Prop. Ind. 1926, 341 (declaring unfair a
statement that one’s product does not have the defects of a
Jean-Jacques Biolay, Publicité comparative, 902
Juris-classeur Concurrence-Consommation ¶ 6 (2003).
Luby, supra note 5, ¶ 8.
Bonet, L’usage de la marque d’autrui dans la
publicité, Le Nouveau Droit des Marques en France 109
(Litec, Publications de l’IRPI No. 10, 1991). Article
L.711-1 of the Code de Propriété Intellectuelle
[Intellectual Property Code] [hereinafter IPC] explicitly defines
the trademark as “a sign … which serves to distinguish
the goods or services of a natural or legal person.”
e.g., Calais-Auloy & Steinmetz, supra note 13, at 123
Bodewig, supra note 8, at 190.
Resolution of Apr. 14, 1975 on the Preliminary Programme of the
European Economic Community for a Consumer Protection and
Information Policy, 1975 O.J. (C 92) 1 [hereinafter Council
Annex ¶ 34.
Proposal of May 28, 1991 for a Council Directive Concerning
Comparative Advertising and Amending Directive 84/450/EEC Concerning
Misleading Advertising, 1991 O.J. (C 180) 14.
idea was generally accepted that harmonizing the rules governing
comparative advertising law in the European Union had become a
necessity. See generally Rafael Cepas Palanca, The
directive on comparative advertising, 3 Revue des Affaires
Européennes 195, 198 (1998).
between advertising rules in the Member States can complicate the
marketing process and may go so far as to disrupt the free movement
of goods and the availability of services in the European single
The Court of Justice has on a number of occasions dealt with situations
where an advertisement, lawful in one Member State has run up
against the laws of a neighboring Member State; in the INNO-BM case,
the court held that a particular law of this type constituted an
obstacle to the free movement of goods within the meaning of article
30 of the Treaty and was not justifiable under article 36 or other
Id. at 198.
id. at 197. Analyzing the main reasons which justified, in the
Commission’s view, the presentation of the proposal for a
Council Directive on comparative advertising, the author explains:
Faced with such diverse information, consumers will benefit more from
comparative advertising, which will demonstrate the merits of
different goods belonging to the same range, than from other sources
Authorization of the comparative advertising technique throughout the single
market will [also] better equip firms to make an effective challenge
to leading brands. The resulting increase in competition will
benefit consumers and favor innovative and enterprising firms.
The present situation where comparative advertising is allowed in some
Member States puts advertisers in other Member State at
Massoni, Publicité comparative, 5 Juris-classeur
Contrats-Distribution, fascicule 4140, ¶ 4 (1994). See,
e.g., Pirovano, supra note 38.
infra note 60 and accompanying text.
Massoni, supra note 56, ¶ 4. The proposal for a new
Consumer Code prepared by the Commission for the Rewriting of
Consumer Law in 1990 also suggested that comparative advertising be
liberally permitted in order to stimulate competition and facilitate
consumer information. See Commission de Refonte du Droit de
la Consommation, Propositions pour un Code de la Consommation,
art. L.55, La Documentation Française 23 (1990).
com., July 22, 1986, J.C.P. 1987, II, 14901, note Gavalda &
Lucas de Leyssac.
No. 92-60 of Jan. 18, 1992 Reinforcing the Protection of Consumers,
J.O., Dec. 21, 1992, p. 968; D.L. 1992, p. 129 [hereinafter the 1992
Act]. For a discussion on the provisions of the 1992 Act, see,
e.g., Jean-Claude Fourgoux, L’article 10 de la loi
du 18 janvier 1992. Feu sur la publicité
comparative, Gaz. Pal. 1, doctr. 279 (1992); Luby, supra
note 5; Yolande Serandour, L’avènement de la
publicité comparative en France: article 10 de la loi No.
92-60 du 18 janvier 1992 renforçant la protection des
consommateurs, J.C.P. 1992, I, 3596.
relevant part, article 10 of the 1992 Act read:
I. An advertisement that contains comparisons between goods or services
and thereby mentions or shows the trade or service mark, name, logo
or the presentation [i.e. “look and feel”] of another
party is permitted only if it is fair, truthful and not likely to
must be limited to an objective comparison that may only concern
essential, important, determinant, and verifiable qualities of
products of a comparative nature available on the market. If the
comparison concerns price, only comparable goods sold under
comparable terms may be compared and the time during which the
advertiser will maintain the price mentioned for his own goods must
be stated. Comparative advertising must not be based on individual
or collective opinions or impressions. No comparison may be directed
toward taking advantage from the notoriety of a mark. No comparison
may present goods or services as imitations or copies of trademarked
goods or services. If merchandise carries a controlled mark of
origin, comparison may only take place among goods all bearing the
same origin mark. Use of comparative advertising of the kind
described above on packages, invoices, transport documents, means of
payments or entrance tickets to events or at public places is
1992 Act, art. 10.
Each of the above provisions was directly contrary to U.S. law.
Particularly interesting was the prohibition of claims supported by
“individual or collective opinions or impressions.” The
purpose of this provision was to prohibit comparative advertisements
based on tests, studies or surveys, such as “studies show
consumers prefer product X more than product Y.”
See Massoni, supra note 56, ¶ 29. This provision
was contrary to the lawfulness of the so-called “establishment
claims” in the United States. Establishment claims are claims
indicating that consumers prefer one product to another or that
scientific or experimental evidence supports the claim.
Advertisements stating that “tests prove that product X
lasts longer than product Y,” that “studies prove
that doctors prefer product X to product Y,” or
that “surveys show that product X is safer,” are
lawful in the United States provided that the test, study or survey
mentioned in the ad is “sufficiently reliable” to
support the claim. See Castrol, Inc. v. Quaker State Corp.,
977 F.2d 57, 62-63 (2d Cir. 1992). It must be pointed out that
current French law on comparative advertising, which results from
the 2001 Decree, does not prohibit claims based on “individual
or collective opinions or impressions.” Since the current law
has given rise to little litigation, we have to wait for future
cases in order to determine whether the suppression of “individual
or collective opinions or impressions” can be understood as
authorizing establishment claims.
For a discussion on the
differences between French and U.S. law, see infra
Part III. Although they focus on the present law of comparative
advertising as resulting from the 2001 Decree, the developments of
Part III can be applied to the provisions of the 1992 Act which have
only been slightly modified by the 2001 Decree. See infra
text accompanying notes 72-74.
e.g., CA Douai, Oct. 2, 1995, D. 1996, 99, note Fourgoux. See
generally Calais-Auloy & Steinmetz, supra note 13, at
123 ¶ 126 (criticizing the 1992 Act as establishing stringent
limits on comparative advertising).
Picod, L’obligation de communication préalable à
l’épreuve de la directive communautaire sur la
publicité comparative, Dalloz Affaires 2001, chron. 914,
914. See generally Massoni, supra note 56, ¶
57-60 (analyzing the terms and remedies of the disclosure
Andrieu, Nouvelle réglementation en matière de
publicité comparative, 186 Légipresse 136 (2001);
see also Picod, supra note 63, at 914, 914 n.7.
Picod, supra note 63, at 914.
tableaux de concordance practice, for example, was
prohibited as infringing the famous perfume manufacturer’s
trademarks. See infra text accompanying notes 143-405
for a discussion on the tableaux de concordance
Paris, Sept. 24, 1996, D. 1997, 235; see also, e.g., CA
Douai, Oct. 2, 1995, D. 1996, 99, note Fourgoux (ruling that it was
disparaging for the ad to present two pictures side by side, one
representing the advertiser’s service and evoking a sun
explosion, the other representing the competitor’s service
under a dark sky).
Bourges, Mar. 6, 1984, Gaz. Pal. 1984, 1, pan. jurispr. 370. See
also Cass. crim., Dec. 22, 1986, D. 1987, 286, note Cas; CA Pau,
Dec. 7, 1983, Revue Internationale de la Propriété
Industrielle et Artistique 84 (1988).
No. 2001-741 of August 23, 2001, J.O., Aug. 25, 2001, p. 13645; D.L.
2001, 2486 [hereinafter the 2001 Decree]. For a discussion
on the provisions of the 2001 Decree, see Andrieu, supra
note 64, at 136; Philippe Laurent, La publicité
comparative harmonisée, 10 Contrats, Conc., Consom. 6
(2001); Jerôme Passa, Brève présentation du
droit de la publicité comparative après la
transposition de la directive communautaire, 3 Propriétés
Intellectuelles 32 (2002); Guy Raymond, Ordonnance du 23 août
2002 portant transposition des directives communautaires en matière
de droit de la consommation, J.C.P. 2001, 1, 50; Guy Raymond,
Publicité comparative. Définition de la publicité
comparative et utilisation de la marque d'autrui, 5 Contrats,
Conc., Consom 28 (2002).
Directive 97/55/EC of 6 October 1997 Amending Directive 84/450/EEC
Concerning Misleading Advertising so as to Include Comparative
Advertising, 1997 O.J. (L 290) 18; D.L. 1997, 358 [hereinafter the
1997 European Directive]. In the mid 1970’s, the Council and
the Commission decided to harmonize the rules governing misleading
advertising in the European Union. They adopted a Directive
concerning misleading advertising in 1984. See Council
Directive 84/450/EEC of Sept. 10, 1984 Relating to the Approximation
of the Laws, Regulations and Administrative Provisions of the Member
States Concerning Misleading Adverting, 1984 O.J. (L 250) 17.
However, because Greece refused to deal with comparative
advertising, the Directive contained no provisions on this
advertising format. The European Commission then decided to deal
with comparative advertising separately and the 1997 European
Directive was adopted. It amended Directive 84/450/EEC on
misleading advertising to include certain provisions on comparative
advertising. The new provisions authorize comparative advertising
while establishing a number of safeguards in order to prevent unfair
and misleading advertising. See 1997 European Directive, at
art. 3(a)(1). For further details on the historical background of
the 1997 European Directive, see Cepas Palanca, supra
note 54, at 196-200.
For a discussion on the
provisions of the 1997 European Directive, see
Jacques-Philippe Gunther, Le parlement
européen harmonise la publicité comparative, Les
Echos, Oct. 10, 1997, 57.
Consumer Code [hereinafter C. con.]. The new regulation defines
comparative advertising as any advertising that expressly or
implicitly identifies a competitor or goods or services offered by a
competitor. C. con. at art. L.121-8. It then sets out a number of
limits to the use of comparative advertising:
advertising which makes a comparison between goods or services by
identifying, implicitly or explicitly, a competitor or goods and
services offered by a competitor is only legal if:
1° It is not false or likely to mislead;
2° It relates to goods or services fulfilling the same requirements or
having the same objective;
3° It objectively compares one or more essential, pertinent, verifiable
and representative characteristics of these goods or services, one
of which may be price.
comparative advertising referring to a special offer must clearly
state the dates when the goods and services offered are to be
available, where appropriate, the fact that the offer is limited to
available stocks and the specific terms applicable.
Comparative advertising may not:
1° Take unfair advantage of the reputation attached to a trademark,
manufacturer’s brand or service mark, to a trade name, to
other distinctive marks of a competitor or to the designation of
origin as well as the protected geographical indication of a
2° Lead to the discrediting
or denigration of marks, trade names, other distinctive signs,
goods, services, activity or situation of a competitor;
3° Engender confusion between the advertiser and a competitor or
between the advertiser’s marks, trade names, other distinctive
signs, goods or services and those of a competitor;
4° Present goods or services as an imitation or reproduction of goods
or services with a protected mark or trade name.
For products with a protected designation of origin or geographical
indication, comparison is only authorized between products each with
the same designation of origin or the same indication.
[T]he advertiser on behalf of which the comparative advertising is
being circulated must be in a position to prove, within a short
time, the physical accuracy of the statements, indications and
presentations contained within the advertising.
For an analysis of the most
relevant provisions of the new regulation, see infra Part
an analysis of the limits on comparative advertising established by
the 2001 Decree, see infra Part II.B.3. and Part III.
supra text accompanying notes 63-65.
infra Part II.B.2.b.
C. con. at art. L.121-8, supra note 69. See, e.g.,
Cass. com., Mar. 27, 2001, Gaz. Pal. 2001, somm. 2089; CA
Versailles, June 27, 2002, J.C.P. 2003 E, II, 56. Although the 1992
Act required that the competitor be specifically named in order for
the advertisement to be comparative, courts considered that as long
as the competitor could be identified, the ad was comparative. In
this respect, the new law restates case law developed over many
years. See, e.g., T.G.I. Paris, Nov. 18, 1992, Gaz. Pal.
1993, jur. 265 (holding that it is a form of comparative ad when
there is a claim stating that natural gas is cheaper than gas
produced through steam because it implicitly refers to the
Compagnie Parisienne de Chauffage Urbain), cited in Andrieu, supra
note 64, at 134 n.5; T.G.I. Paris, Feb. 18, 1989, Gaz. Pal. 1989, 7
(declaring that identifying competitors is easier when there are a
few of them), cited in James R. Maxeiner, Peter Schotthofer,
Advertising Law in Europe and North America § 13 n.73
(Aspen Publishers, 2d ed. 1999). On the contrary, when
the competitor cannot be identified, the ad is not a form of
F.2d 939, (3d Cir. 1993).
Hayden Co. v. Siemens Med. Sys., Inc., 1985 WL 9700, at 1 (S.D.N.Y.
F. Supp. 984 (S.D.N.Y. 1994).
at 991. It is an interesting fact that, under U.S. law, harm is
presumed when a direct comparison is made, i.e. when the competitor
is expressly mentioned by name, but must be shown otherwise. The
Second Circuit held that “[t]he type and quantity of proof
required to show injury and causation has varied from one case to
another depending on the particular circumstances. On the whole, we
have tended to require a more substantial showing where … the
defendant’s advertisements do not draw direct comparisons
between the two.” Ortho Pharm. Corp. v. Cosprophar, Inc., 32
F.3d 690, 694 (2nd Cir. 1994).
Act, at art. 10. See supra note 61.
con., at art. L.121-8(2). See supra note 71.
Act, at art. 10. See supra note 61.
con., at art. L.121-8(3). See supra note 71.
Robert B. Hughes, Legal Compliance Checkups: Business Clients §
12:21 n.2 (Callaghan 1985).
v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968) .
Paris, Dec. 4, 2002, 4 Contrats, Conc., Consom., 33 (2003). But
cf. Trib. com., Paris, May 7, 2003, 2 Contrats, Conc., Consom.
31-32 (2004) (declaring unlawful the comparison between the rates of
two telephone companies because no information was provided with
regard to the way the alleged saving was calculated and to the
competitor’s specific rate which had been taken into account
in the comparison).
requirement that the claim be truthful and not mislead consumers
applies to any type of advertisement, not only to comparative
Act, at art. 10. See supra note 61.
supra notes 66-68 and accompanying text.
com., July 1, 2003, J.C.P. 2003 E, 38, 1461.
Henni, La publicité
comparative de Tele2 condamnée
en appel, Les Echos, Aug. 20,
43(a) of the Lanham Act reads in the pertinent part:
(1) Any person who...
in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or
another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he
or she is likely to be damaged by such act.
15 U.S.C. § 1125(a) (2004).
Congress amended Section 43(a)
of the Lanham Act in 1988 to include statements made by the
advertiser about “his or her or another person’s”
products. Before the amendment, courts recognized the existence of a
federal cause of action for false statements about one’s own
products, but considered that Section 43(a) did not encompass false
statements about one’s competitor’s goods. Since the
amendment, they have also applied Section 43(a) to false statements
about one’s competitor’s products.
Plaintiff must prove several
elements in order to establish a false advertising claim under
Section 43(a) of the Lanham Act: (1) a false statement of fact,
(2) in interstate commerce, (3) in connection with
commercial advertising or promotion, (4) that actually deceives
or has the capacity to deceive an appreciable number of consumers,
(5) that is material, i.e. likely to influence purchasing
decisions, and (6) causes or is likely to cause injury to the
plaintiff. Skil Corp. v. Rockwell Int’l Corp., 375 F. Supp.
777, 783 (N.D. Ill. 1974); see also, e.g., Tacquino v.
Teledyne Monark Rubber, 893 F.2d 1488, 1500 (5th Cir. 1990) (stating
“to succeed it must be proved that; (1) [defendant] made a
false statement of fact about their product; (2) statements deceived
or had the capacity to deceive a substantial segment of potential
customers; (3) the deception is material in that it is likely to
influence the purchasing decision; (4) [defendant] caused its
product to enter interstate commerce; and (5) [plaintiff] has been
or is likely to be injured as a result.”).
5 of the FTC Act declares unlawful “[u]nfair methods of
competition … and unfair or deceptive acts or practices in or
affecting commerce.” 15 U.S.C. § 45 (2004). The FTC Act,
which created the FTC, was passed by Congress in 1914. At that time,
the FTC had a mandate to prohibit only “[u]nfair methods of
competition … in or affecting commerce.” The
prohibition of “unfair or deceptive acts or practices”
was added in 1938 by the Wheeler-Lea Amendment to the FTC. The
courts consider three basic elements in any deceptive trade practice
case under the FTC Act: (1) “there must be a representation,
omission or practice that is likely to mislead the consumer,”
(2) the consumers who are likely to be misled must be “acting
reasonably under the circumstances,” and (3) “the
representation, omission or practice must be a material one.”
Kraft Inc. v. F.T.C., 970 F.2d 311, 314 (7th Cir. 1992).
Uniform Deceptive Trade Practices Act provides in relevant part:
§ 2. Deceptive trade
practices. (a) A person engages in a deceptive trade practice
Represents that goods or services have sponsorship, approval,
characteristics, ingredients, uses, benefits, or quantities that
they do not have or that a person has a sponsorship, approval,
status, affiliation, or connection that he does not have;
Disparages the goods, services, or business of another by false
representation of fact...
U.D.T.P.A. § 2(a) (amended
1966). The Act has been enacted by about a dozen states. States that
have enacted the U.D.T.P.A. include: Colorado, Delaware, Georgia,
Hawaii, Illinois, Maine, Minnesota, Nebraska, New Mexico, Ohio,
Oklahoma, and Oregon.
expression “little FTC Acts” designates some form of
consumer protection statute which has been adopted by many states.
These state statutes are traditionally known as “little FTC
Acts” because their language is very similar to the language
of the FTC Act. Their provisions may encompass false comparative
advertising. For example, the Massachusetts Consumer Protection Act
prohibits “unfair methods of competition and unfair or
deceptive acts or practices.” Mass. Gen. Laws Ann. Ch. 93A, §
2(a) (2003). Similarly, the California Business & Professional
Code defines “unfair competition” to mean “unlawful,
unfair or fraudulent business practice and unfair, deceptive, untrue
or misleading advertising,” Cal. Bus. & Prof. Code §
17200 (West 2003), and the Florida Annotated Statute declares
unlawful “[u]nfair methods of competition, unconscionable acts
or practices, and unfair or deceptive acts or practices in the
conduct of any trade or commerce.” Fla. Stat. Ann. §
501.204 (West 2003).
Harrison, supra note 2, at 232-34 (stating the elements of
and case law relating to each of these causes of action). For a
brief comparison of the product disparagement cause of action in the
United States and in France, see infra note 168.
Tobacco, Inc. v. Davidoff of Geneva (CT), Inc., 957 F. Supp. 426,
433-34 (S.D.N.Y. 1997); see also, Am. Home Prods. Corp. v.
Johnson & Johnson, 654 F. Supp. 568, 585 (S.D.N.Y. 1987)
(holding false an unqualified equivalence claim for analgesics
because it was true for mild to moderate pain, but not for strong
Inc. v. Quaker State Corp., 977 F.2d 57, 63 (2d Cir. 1992).
this analysis may also apply to trade names and other distinctive
signs, it will focus on trademarks as they are the distinctive signs
most frequently involved in comparative advertising.
infra text accompanying notes 143-45 for a discussion on the
tableaux de concordance practice.
Paris, Jan. 11, 1998, 1988 Bull. l’Ordre des Pharmaciens No.
309, 330, cited in Biolay, supra note 45, ¶ 55.
Paris, Mar. 16, 1984, Gaz. Pal. 1984, I, pan. jurispr. 369.
F. Supp. 433 (S.D.N.Y. 1986).
at 437. It must be pointed out that where trademark infringement is
found, the courts’ tendency is to consider that the
infringer’s use of a “like/love” slogan may
exacerbate the likelihood of confusion. See, e.g., Bausch &
Lomb, Inc. v. Nevitt Sales Corp., 810 F. Supp. 466, 477 (W.D.N.Y.
1993) (issuing an injunction against defendant’s use of the
slogan “if you like Ray-Ban, you’ll love Rayex,”
considering that it would exacerbate defendant’s infringement
of plaintiff’s trademark). However, courts refuse to enjoin
the use of “like/love” advertisements where there is no
likelihood of confusion. See infra note 124 and accompanying
Louis Altman & Rudolf Callmann, Callmann on Unfair Competition,
Trademarks and Monopolies § 22:28 (Callaghan,
4th ed. 1998).
Labs., Inc. v. Mi-Lor Corp., 810 F.2d 20, 22 (2d Cir. 1987), cited
in Altman & Callmann, supra note 106, §
con., at art. L.121-8(3). The requirement that the feature be
“decisive” can be compared to the U.S. materiality
requirement. In the United States, to be actionable, a falsehood
must be “material,” i.e. likely to influence consumers
in making their purchasing decisions. Skil Corp. v. Rockwell Int’l
Corp., 375 F. Supp. 777, 783 (N.D. Ill. 1974); see also,
e.g., Zine v. Chrysler Corp., 600 N.W.2d 384, 398 (Mich. Ct.
App. 1999) (“[A] material fact for the purposes of [Michigan
law] would... be one that is important to the
transaction or affects the consumer’s decision to enter into
supra note 56, ¶ 28.
Paris, Sept. 23, 1991, Gaz. Pal. 1991, 2, pan. jurispr. 576.
Paris, 4e ch., July 1, 1998, D. 1998, inf. rap. 197; see also CA
Paris, 4e ch. B, Sept. 10, 1999, D. 1999, 30 (holding unlawful a
general claim stating that a radio station is superior to another).
Versailles, June 27, 2002, J.C.P. 2003 E, II, 56.
15 U.S.C. § 1125(a) (2003); see also, e.g.,
Randa Corp. v. Mulberry Thai Silk, Inc., 58 U.S.P.Q.2d 1718,
2000 WL 1741680, at *3 (S.D.N.Y. Nov. 27, 2000) (holding that a
statement that licensor is going to suffer a 30% revenue loss due to
competition is opinion-type puffery and therefore non-actionable).
Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d 725, 731
(9th Cir. 1999); see also Presidio Enters., Inc. v. Warner
Bros. Distrib. Corp., 784 F.2d 674, 679 (5th Cir. 1986) (stating
“[a] statement of fact is one that (1) admits of being
adjudged true or false in a way that (2) admits of empirical
v. Random House, Inc., 61 F.3d 1045, 1051 (2d Cir. 1995).
e.g., U.S. Healthcare, Inc. v. Blue Cross of Greater Phila., 898
F.2d 914, 926 (3d Cir. 1990) (finding that the health insurer’s
claim “Better than HMO. So good, it’s Blue Cross and
Blue Shield” is puffery), cert. denied, 498 U.S. 816
Hut, Inc., v. Papa John’s Int’l, Inc., 227 F.3d 489, 497
(5th Cir. 2000).
e.g., Blue Cross of Greater Phila., 898 F.2d at 926;
Smith-Victor Corp. v. Sylvania Elec. Prod., Inc., 242 F. Supp. 302,
308 (N.D. Ill. 1965) (“[A]dvertising which merely states in
general terms that one product is superior is not actionable.”).
e.g., Clorox Co. Puerto Rico v. Procter & Gamble Commercial
Co., 228 F.3d 24, 39 (1st Cir. 2000) (commenting “[s]tanding
alone, [‘Whiter is not possible’] might well constitute
an unspecified boast, and hence puffing. In context, however, the
statement invites consumers to compare Ace’s whitening power
against either other detergents acting alone or detergents used with
chlorine bleach … . [I]t is a specific, measurable claim, and
hence not puffing.”); Southland Sod Farms v. Stover Seed Co.,
108 F.3d 1134, 1145 (9th Cir. 1997) (holding that the claim that
advertised defendant’s grass seed as “Less is More”
was general and unmeasurable non-actionable puffery; by contrast,
the claim that defendant’s grass required “50% Less
Mowing” was actionable because it was “a specific and
measurable advertisement claim of product superiority based on
e.g., Omega Eng’g, Inc. v. Eastman Kodak Co., 30 F. Supp.
2d 226, 259 (D. Conn. 1998) (finding subjective a claim that a
product is “perfect” for a specific purpose).
e.g., Blue Cross of Greater Phila., 898 F.2d at 922
puffing, advertising ‘that is not deceptive for no one would
rely on its exaggerated claims,’ is not actionable under §
43(a)” (quoting Toro Co. v. Textron, Inc., 499 F. Supp.
241, 253 n.23 (D. Del. 1980)); United
States v. An Article…Consisting of 216 Individually Cartoned
Bottles, 409 F.2d 734, 741 (2d Cir. 1969) (ruling that claims which
contain “familiar exaggerations” may not be prohibited
because “virtually everyone can be presumed to be capable of
discounting them as puffery.”).
F.3d 489 (5th Cir. 2000).
at 498-99. However, the court held that advertisements using the
“Better ingredients. Better pizza” slogan and comparing
the ingredients used by Papa John’s to those used by Pizza Hut
constituted actionable factually-based claims. The court reasoned:
message communicated by the slogan... is expanded
and given additional meaning when it is used as the tag line in the
misleading sauce and dough ads. The slogan, when used in combination
with the comparison ads, gives consumers two fact-specific reasons
why Papa John’s ingredients are “better.”...
In short, Papa John’s has given definition to the word
Id. at 501. Despite the
fact that the superiority claims were false, the court dismissed the
case because evidence did not prove that the Papa John’s
claims were “material,” i.e. that consumers relied on
them). Id. at 503-04.
F.2d 716 (9th Cir. 1975); see also Diversified Mktg., Inc. v.
Estee Lauder, Inc., 705 F. Supp 128 (S.D.N.Y. 1988) (refusing to
enjoin use of the comparative advertising slogan “If You Like
Estee Lauder ... You’ll Love Beauty USA”). But cf.
Charles of the Ritz Group, Ltd. v. Quality King Distrib., Inc., 636
F. Supp. 443 (S.D.N.Y. 1986); see supra notes 104-05 and
accompanying text. See generally Diane Martens Reed, Comment,
Use of “Like/Love” Slogans in Advertising: Is the
Trademark Owner Protected? 26 San Diego L. Rev. 101 (1989).
must be pointed out that the credulous consumer was the criterion
before the reasonable consumer became the standard. See, e.g.,
Florence Mfg. Co. v. J.C. Dowd & Co., 178 F. 73, 75 (2d Cir.
1910) (ruling that “the law is... made for
the protection of... the ignorant, the unthinking,
and the credulous, who, in making purchases do not stop to analyze
but are governed by appearances and general impressions.”);
Doe v. Boys Clubs, Inc., 907 S.W.2d 472, 479-80 (Tex. 1995) (stating
“an act is false, misleading or deceptive [under the Texas
Deceptive Trade Practice Act] if it has the capacity to deceive an
‘ignorant, unthinking or credulous person.’”). The
“reasonable consumer” standard was applied for the first
time in Cliffdale Assocs., 103 F.T.C. 110 (1984) (finding a claim
stating that the advertiser’s engine device would enable
consumers to save fuel as deceptive).
Policy Statement on Deception, 103 F.T.C. 174, appended to Cliffdale
Assocs., 103 F.T.C. 110 (1984), [hereinafter Policy Statement on
Deception] available at
http://www.ftc.gov/bcp/policystmt/ad-decept.htm (Oct. 14, 1983).
F.2d 1312 (9th Cir. 1991).
Doepner & Frank-Erich Huagel, Towards a European Consumer
Protection? Protection Against Misleading Advertising in Europe,
88 Trademark Rep. 177, 193 (1998) (stating “[c]ourts applying
the Lanham Act have held that an advertisement may be deemed
misleading if ‘a not unsubstantial number of consumers receive
a false or misleading impression from it.’”) (quoting
McNeilab, Inc. v. Am. Home Products Corp., 501 F. Supp. 517, 528
(S.D.N.Y. 1980), modified, 501 F. Supp 540 (S.D.N.Y. 1980)).
case law used that language to define the credulous consumer before
the reasonable consumer became the standard. See supra
note 123. For examples of French cases using the “consommateur
moyen” as a standard, see, e.g., CA Paris,
Sept. 27, 1993, D. 1994 somm. 77, note M.-L. Izorche (stating that a
likelihood of confusion exists when the “consommateur
d’attention moyenne” is not able to carry out a
technical examination capable of disclosing the differences between
the products which he does not simultaneously have in front of
him”), cited in Pascal Wilhelm, La Concurrence
déloyale et parasitaire appliquée à la
(last visited Jan. 5, 2005).
& Huagel, supra note 129, at 192 (quoting Calais-Auloy
& Steinmetz, supra note 13, ¶ 117 at 111).
sophisticated consumer has special knowledge of the type of product
advertised. See, e.g., Sandoz Pharms. Corp. v.
Richardson-Vicks, Inc., 902 F.2d 222, 229-30 (3d Cir. 1990)
(commenting “a target audience’s special knowledge of a
class of products is highly relevant to any claim that it was misled
by an advertisement for such a product.”); Plough, Inc. v.
Johnson & Johnson Baby Prods. Co, 532 F. Supp. 714, 717-18 (D.
Del. 1982) (stating “[c]ontext can be important in discerning
the message conveyed and this is particularly true where, as here,
the target of the advertising is not the consuming public but a more
well informed and sophisticated audience of merchants.”);
Policy Statement on Deception, supra note 126 (commenting “a
practice or representation directed to a well-educated group, such
as prescription drug advertisement to doctors, would be judged in
the light of the knowledge and sophistication of that group.”).
e.g., Standard Oil Co. v. Fed. Trade Comm’n, 557 F.2d 653,
658 (9th Cir. 1978) (upholding the FTC’s finding that
consumers would be deceived by an ad stating that gasoline additive
would reduce pollution by transforming clear exhaust into dark
exhaust because many consumers are not well-informed about the
effects of visible and invisible components of exhaust on air
pollution and would falsely believe that the gasoline additive would
significantly decrease pollution).
e.g., Marcus Marcus v. AT&T Corp., 138 F.3d 46, 57 (2d Cir.
1998) (holding that when a telephone company’s slogan claims
that using its services would enable consumers to amass “true
savings,” the consumer who did not accumulate “true
savings” cannot be granted remedy).
e.g., Grolier, 91 F.T.C. 315, 430 (1978) (stating “[i]n
determining the meaning of an advertisement…the important
criterion is the net impression that it is likely to make on the
general populace.”), remanded on other grounds, 615
F.2d 1215 (9th Cir. 1980), modified on other grounds, 98
F.T.C. 882 (1981), reissued, 99 F.T.C. 379 (1982); Policy
Statement on Deception, supra note 126, § III (declaring
that the FTC examines “expectations and understandings of the
Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618 (7th Cir. 1995)
(citation omitted); see also Doepner & Huagel,
supra note 129, at 186 (stating “consumer protection
would be undermined if strict advertising laws effectively prevented
the dissemination of information which, though potentially
misunderstood by a minority of the consumers addressed, enhanced the
transparency of the market for the vast majority of the public.”).
the analysis conducted in this article may also apply to trade names
and any other distinguishing signs, it will focus on trademarks as
they are the trade symbols most frequently involved in comparative
con., at art. L.121-9(1), supra note 71.
at art. L.121-9(4).
form of comparative advertisements is also declared unlawful by
L.713-2 IPC, which prohibits the “reproduction, use or
affixing of a mark even with the addition of words such as formula,
style, system, imitation, type or method.” See, e.g.,
CA Versailles, Jan. 19, 1987, D. 1993 somm. 113.
Bourges, June 15, 1995, P.I.B.D. 1995, III, 595, 432; see also,
e.g., CA Paris, Sept. 19, 1997, Gaz. Pal. 1998, 1, somm. 372.
e.g., Cass. com., July 8, 2003, 11 Contrats, Conc., Consom. 29
(2003) (holding that does not constitute an unfair business practice
the fact of copying the product of another).
e.g., Cass. com., Oct. 16, 1985, 1985 Bull. Civ. IV, No. 243;
Cass. com., Jan. 27, 1981, Ann. Prop. Ind. 1981, 91.
Vilmart, La réference à la marque d’autrui
sera-t-elle encore sanctionnée en dehors de la contrefaçon
- Le cas de la parfumerie, Gaz. Pal. 1991, 8, doctr.
McCarthy, supra note 14, § 24:68.
W. Pattishall, Dawning Acceptance of the Dilution Rationale for
Trademark-Trade Identity Protection, 74 Trademark Rep. 289, 308
U.S.C. §§ 1125(c), 1127 (2003). Section
1125(c) provides: “(1) The owner of a famous mark shall be
entitled... to an injunction against another
person’s commercial use in commerce of a mark or trade name,
if such use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark ….”
Section 1127 defines dilution as “the lessening of the
capacity of a famous mark to identify and distinguish goods or
services, regardless of the presence or absence of – (1)
competition between the owner of the famous mark and other parties,
or (2) likelihood of confusion, mistake, or deception.”
started to adopt dilution statutes in the 1940’s. For an
example of state anti-dilution law, see, e.g., N.Y. Gen. Bus.
Law § 360-1 (McKinney 2003)
(“Likelihood … of dilution of the distinctive quality
of a mark or trade name shall be a ground for injunctive relief in
cases of infringement of a mark registered or not registered or in
cases of unfair competition...”).
supra note 8, at 184.
U.S.C. § 1125(c)(4)(A) (2003).
It must be noted that courts consider that state dilution laws
should be analyzed and construed as the Federal Dilution Act. See
4 McCarthy, supra note 14, §
24:79 (quoting Avery Dennison Corp. v. Sumpton,
189 F.3d 868, 51 U.S.P.Q.2d 1801, 1806 (9th Cir. 1999) (“We
have interpreted [the California Bus & Prof Code] § 14330,
like the Federal Dilution Act, to protect only famous marks.”);
Network Network v. CBS, Inc., 2000 WL 362016 at *4 (C.D. Cal.
2000) (“Dilution under state law is subject to essentially the
same analysis as dilution under the FTDA.”); see generally
Nancy S. Griewe, Antidilution Statutes: A New Attack on
Comparative Advertising, 72 Trademark Rep. 178 (1982) (exploring
the relationship between state anti-dilution statutes and
Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806 (9th Cir. 2002) (“A
nominative use, by definition, refers to the trademark holder’s
product. It does not create an improper association in consumers’
minds between a new product and the trademark holder’s
F.3d 39 (2d Cir. 1994).
infra notes 174-77 and accompanying text.
McCarthy, supra note 14, § 25:52.
v. Chanel, Inc., 402 F.2d 562, 568 (9th Cir. 1968) .
U.S. 375 (1910).
real intent of the plaintiff’s bill, it seems to us, is to
extend the monopoly of such trademark or trade name as she may have
to a monopoly of her type of bitter water, by preventing
manufacturers from telling the public in a way that will be
understood, what they are copying and trying to sell. But the
plaintiff has no patent for the water, and the defendants have a
right to reproduce it as nearly as they can. They have a right to
tell the public what they are doing, and to get whatever share they
can in the popularity of the water by advertising that they are
trying to make the same article, and think that they succeed. If
they do not convey, but, on the contrary, exclude, the notion that
they are selling the plaintiff’s goods, it is a strong
proposition that when the article has a well-known name they have
not the right to explain by that name what they imitate. By doing
so, they are not trying to get the good will of the name, but the
good will of the goods.
Id. at 380-81 (citations
Comptoir de L'Industrie Cotonnière, Etablissements Boussac v.
Alexander’s Dep’t Stores, 299 F.2d 33 (2d Cir. 1962).
at 36. The Chanel court similarly stated:
Assuming the equivalence of
“Second Chance” and “Chanel No. 5,” the
public interest would not be served by a rule of law which would
preclude sellers of “Second Chance” from advising
consumers of the equivalence and thus effectively deprive consumers
of knowledge that an identical product was being offered at one
third the price.
taking his “free ride,” the copyist, albeit
unintentionally, serves an important public interest by offering
comparable goods at lower prices.
402 F.2d at 568. The Chanel case is often cited as an
authoritative decision. See, e.g., Sykes
Lab., Inc., v. Kalvin, 610 F. Supp. 849 (C.D. Cal. 1985) ,
consequence of the rule announced in Smith v. Chanel is that the
copyist may freely capitalize on the goodwill and product
recognition developed at great cost by the trademark owner...
If they have taken a “free ride” on plaintiff’s
name without causing confusion or deception, then they have taken
that to which they were legally entitled.
Id. at 854-55.
815 F.2d 500 (8th Cir. 1987) .
supra note 45 and accompanying text.
supra note 67 and accompanying text.
L.121-9(2) of C. con. also prohibits comparisons discrediting or
denigrating a competitor’s products or services.
Although the analysis of article L.121-9(2) focuses on comparative
claims disparaging a competitor’s trademark, it is
worth mentioning that, contrary to French law, U.S. law requires
falsity in product disparagement cases. Under U.S. law,
product disparagement occurs when “when one publishes, with
the requisite state of mind, a false statement of fact disparaging
another’s goods or services which is proven to have caused a
specific loss of sales.” 4 McCarthy, supra note 14, §
27:91. The elements of the tort of product disparagement usually
a falsehood; (2) published, or communicated to a third person; (3)
when the defendant-publisher knows or reasonably should know that it
will likely result in inducing others not to deal with the
plaintiff; (4) the falsehood does play a material and substantial
part in inducing others not to deal with the plaintiff; (5) special
damages are proximately caused as a result of the published
Harrison, supra note 2,
at 233-34. Consequently, product disparagement falls under the
rubric of false advertising.
Alpi, Action en Concurrence Déloyale. Eléments de
Concurrence-Consommation, fascicule 245, ¶ 47 (2003).
com., Mar. 2, 1982, cited in Biolay supra note 45, ¶
Paris, Mar. 27, 1977, cited in Biolay, supra note 45, ¶
Paris, Feb. 12, 1988, D. 1988 inf. rap., 75. See Biolay,
supra note 45, ¶ 45, 47.
Douai, Oct. 2, 1995, D. 1996, 99, note Fourgoux; 9 Légicom 52
(1995). But cf. CA Paris, Jan. 18, 2002, Gaz. Pal. 2002, II,
jur. 1668 (holding that it was not disparaging for a radio station
to display two soda cans of different sizes, the big one bearing the
logo of the advertiser (NRJ) and the small one the logo of one
competitor (Europe 1) accompanied by a slogan of the type: “NRJ
has 30% listeners more than Europe 1.”).
has its roots in the 1964 USTA (now
the International Trademark Association or INTA) Model
Bill which used the language “likelihood
of injury to business reputation.” Today, most anti-dilution
state statutes use that same language. See Robert
S. Nelson, Unraveling the Trademark Rope: Tarnishment and Its
Proper Place in the Laws of Unfair Competition, 42 IDEA 133, 146
& Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994).
Foods Corp. v. Jim Henson Prods., 73 F.3d 497, 508 (2d Cir. 1996).
Federal Dilution Act does not expressly use the terms “tarnishment”
and “likelihood of injury to business reputation.” See
supra note 152. Certain commentators have asserted that
legislative history makes it clear that Congress did not intend to
exclude tarnishment from the Federal Dilution Act. See 4
McCarthy, supra note 14, §
supra note 174, at 150.
However, in Moseley v. Victoria Secret Catalogue, Inc., 537 U.S.
418, 432 (2003), the Supreme Court cast doubt on this. It held that
“the contrast between the state statutes, which expressly
refer to both ‘injury to business reputation’ and to
‘dilution of the distinctive quality of a trade name or
trademark,’ and the federal statute which refers only to the
latter, arguably supports a narrower reading of the FTDA.” It
must be noted that the Restatement (Third) of Unfair Competition
encompasses dilution by tarnishment. Restatement (Third) of Unfair
Competition § 25 (1995).
Nelson, supra note 174, at 145-46 (2002).
id. at 171.
41 F.3d at 45.
at 45. After observing that the
advertisement constituted neither blurring nor tarnishment, the
court declared that “the blurring/tarnishment dichotomy does
not necessarily represent the full range of uses that can dilute a
mark...” Id. at 44. The
alteration form of dilution created by the Deere court has
later been construed as “a broad view of tarnishment”
rather than as “a new category of dilution.” See
Hormel Foods, 73 F.3d at 507.
41 F.3d at 44.
Forest, Publicité: l’humour n’excuse
pas tout, Les Echos, Sept. 1, 2004, 12.
supra note 174, at 171.
Second Circuit held that when a mark is used “to identify a
competing product in an informative comparative ad, … the
scope of the protection under a dilution statute must take into
account the degree to which the mark is altered and the nature of
the alteration.” Deere, 41 F.3d at 45; see
Scouts of U.S.A. v. Personality Posters Mfg. Co., 304 F. Supp. 1228,
1233 (S.D.N.Y. 1969)
(holding that a poster depicting a pregnant girl scout, thereby
conveying the idea that the traditional image of girl scouts as
chaste must be challenged, did not injure the Girl Scouts’
41 F.3d at 45 (emphasis added).
supra notes 152-59 and accompanying text.
Advertising, 67 Trademark Rep. 351, 351 (1977).
R. Miller & Michael H. Davis, Intellectual Property: Patents,
Trademark, and Copyrights In a Nutshell 189 (3d ed. 2000).
supra note 152, at 179.
& Davis, supra note 189, at 191.
16/74, Centrafarm BV v. Winthrop BV, 1974 E.C.R. 1183 (1974).
v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968).
at 566-67 (quoting J. Bain, Barriers to New Competition 114-15
supra note 152, at 179.
402 F.2d at 568.
Griewe, supra note 152, at 202-03.
supra note 194-95 and accompanying text.
supra Part II.B.1.b.
generally 5 McCarthy, supra note 14, § 31:90
(analyzing the consistency between “free” competition
and “fair” competition).
supra note 64, at 136.
Goldman, supra note 18, at 507.
Dianoux & Jean-Luc Heerman, Comparative Advertising in
Europe: State of the Art and Perspectives, available at
visited Jan. 5, 2005).
Case C-44/01, Pippig Augenoptik GmbH & Co KG v Hartlauer
Handelsgesellschaft mbH, 2003 E.C.R I-03095:
[Provisions of the 1997 European Directive] preclude the application to
comparative advertising of stricter national provisions on
protection against misleading advertising as far as the form and
content of the comparison is concerned, without there being any need
to establish distinctions between the various elements of the
comparison, that is to say statements concerning the advertiser’s
offer, statements concerning the competitor’s offer and the
relationship between those offers.
of the 1997 European Directive] must be interpreted as meaning
that... the advertiser is in principle free to
state or not to state the brand name of rival products in
of the 1997 European Directive] do not preclude compared products
from being bought through different distribution channels.
rival offers, particularly as regards price, is of the very nature
of comparative advertising. Therefore, comparing prices cannot in
itself entail the discrediting or denigration of a competitor who
charges higher prices...
of the 1997 European Directive] do not prevent comparative
advertising, in addition to citing the competitor’s name, from
reproducing its logo and a picture of its shop front, if that
advertising complies with the conditions for lawfulness laid down by
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