UK: All Not Smelling Rosy For Cheap Copycat Perfumes, As L’Oréal Battle To Europe Was Really Worth It – L’Oréal v Bellure, European Court Of Justice…

Last Updated: 25 August 2009

L'Oréal brought an action for trade mark infringement against the defendant who sold look-alike/smell-alike perfumes - perfumes that looked and smelt like some of L'Oréal's established fine fragrance brands. This case was not about the fact that the perfumes smelt similar but about the get-up of the infringing articles. The High Court initially ruled that two replica perfumes had sufficiently similar packaging to L'Oréal's registered trade marks to create an association between the copy and the real thing in consumers' minds - so that the defendants had taken unfair advantage of the character and reputation of L'Oréal's registered marks and L'Oréal's activities in maintaining and enhancing its perfume ranges. This was despite the fact that there had been no confusion in the minds of the customers. The High Court had also ruled that the defendants' use of the registered marks on lists which compared the prices of their products to the original brands amounted to an infringement of trade marks, as the use had not been in accordance with honest commercial practices. The defendants appealed, and the Court of Appeal referred questions to the European Court of Justice to answer so as to interpret EU trade mark law. The ECJ has now come down in L'Oréal's favour.

The ECJ has ruled that unfair advantage could be taken of a mark even where there was no confusion or detriment to the trade mark. It was enough that a copycat sought to obtain an advantage by riding onto the coat-tails of the mark with a reputation in order to benefit from the other mark's prestige - which had been acquired through careful and costly marketing - but without having to pay for it. Trade mark infringement could take place where there is a similarity between the marks, such that the relevant part of the public establishes a link between the two marks, and there is dilution, tarnishment or free-riding. Free-riding meant that, for there to be infringement, the copied brand did not even need to suffer. It was for the national courts to make a global assessment, taking account of the strength of the mark's reputation and distinctiveness, and the similarity of marks and goods/services.

The ECJ also said that using comparison lists could constitute comparative advertising. Comparative advertising could not be stopped by a trade mark owner if it satisfied the list of conditions in Article 3a(1) of the Comparative Advertising Directive. However, that list included not taking unfair advantage of the reputation of a trade mark, and not presenting goods or services as imitations of goods or services bearing a protected trade mark. The ECJ said that the Directive prevented an advertiser from stating or suggesting in comparative advertising that the product or service was an imitation or replica of something with a well-known mark. That would take unfair advantage of the reputation of that mark. The ECJ said use of a competitor's trade mark in comparative advertising was allowed where the comparison objectively highlighted differences and did not give rise to unfair competition.

As Paul Gershlick, editor of Upload-IT, recently told The Times: 'Some businesses try to promote cheaper imitations simply by comparing them to more famous brands and creating an association in the minds of consumers. They seek to benefit by saying, 'Our product is quite like theirs'. The highest court in Europe has sent a clear message to those businesses that they cannot expect a free ride for their own commercial advantage and benefit from the huge investment made over many years by the famous brands.' To read The Times report in full, click here.

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