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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