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Home | ECJ protects well known trade marks
ECJ protects well known trade marks
19 June 2009
The European Court of Justice (ECJ) has ruled in favour of cosmetics giant L'Oreal, after three perfume manufacturers produced smell-alike fragrances almost identical to L'Oreal's own.
Facts
Bellure, Malaika and Starion manufactured and marketed imitations of fine fragrances, including well known perfumes from L'Oreal - Tresor, Noa and Anais Anais.
The imitations were bottled and packaged to look like the L'Oreal originals - they even smelled similar.
And as well as being marketed in look-a-like bottles and packaging, they were promoted using comparison lists indicating which L'Oreal perfume they imitated.
L'Oreal sued Bellure, Malika and Starion for trade mark infringement.
Even though all parties agreed it was unlikely consumers would be confused by the similarities, and would realise they were two different products from different manufacturers, the UK High Court ruled in favour of L'Oreal.
The defendants appealed, and the Court of Appeal subsequently referred a number of questions to the ECJ for a preliminary ruling.
Ruling
Essentially, the ECJ has provided greater protection for well known marks by stating:
- the stronger the reputation of the trade mark, the easier it will be to show that harm has been caused even if there is no confusion between the imitation and the well known trade mark
- if an imitation product is effectively riding ‘on the coat tails' of a well known mark ‘in order to benefit from its power of attraction, its reputation and its prestige, and to exploit...the marketing effort expanded by the proprietor of the mark,' it would be taking unfair advantage of the reputation of the well known trade mark (again, even if there is no confusion)
- where a third party explicitly or implicitly states in comparative advertising that its product is an imitation of a well known trade marked product, it will, accordingly, be unlawful advertising and fall foul of the European Comparative Advertising Directive
What it means
The ruling is important news for brand owners who have trade marks of considerable repute.
The ECJ judgment effectively allows brand owners to prevent third parties bringing out products similar to their own trade marked product, and which are riding ‘on the coat tails' of the brand's success; even if consumers recognise it is not connected to the brand and there is no confusion between the products.
What should you do?
Brand owners:
- keep an eye out for similar or imitation products that are taking advantage of the repute of your trade mark, even if there is no confusion
- be prepared to act if a third party takes unfair advantage of your trade mark - it is always better in the long run to be proactive rather than reactive
New businesses:
- be aware of what is currently on the market and avoid manufacturing a product that is similar to a product with a big reputation or which is well known
- do not market your products as imitations of well known products.
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Rachael Parman
Associate
T: 03700 86 8494
I: +44 (0)1908 48 8494
E: rachael.parman@shoosmiths.co.uk