European Court decision backs L’Oreal in ‘smell-a-like’ case
The French cosmetics giant claimed that the sale of Bellure products accompanied by a list comparing the products to L’Oreal’s fragrances, infringed on the company’s trademarks.
The European Court of Justice (ECJ) has ruled that even in cases where there is no confusion (consumers buying Bellure’s products knew they were not L’Oreal’s) there is still infringement if the intention of the company is to free ride on the back of L’Oreal’s reputation.
In addition, the court ruled that it is not necessary to prove that the trademark holder is damaged by the sale of the copycat products; intention to free ride on the part of the imitator is enough.
Furthermore, the ECJ ruled that the use of price comparison lists comparing products to those of the trademark holder, is comparative advertising (making reference to another trademarked product during advertising) and not simply providing information.
“Comparative advertising is allowed if it is for honest purposes. However, it is not allowed if you are saying your product is an imitation or a replica,” explained Fiona McBride, a trademark specialist from Withers and Rogers.
“In this case, Bellure did say these were imitation products,” said McBride.
The case was referred to the ECJ by the UK Court of Appeal where it must return for judgement, when the UK Court will interpret the rulings made by the ECJ.
ECJ decision a ‘precedent’
“The ECJ’s judgement is very much a precedent and will give brand owners comfort that they haven’t had in many recent cases,” said Isabel Davies, a senior partner of the intellectual property team at CMS Cameron McKenna.
“It is no longer possible to use other’s brand names to sell products if they are set up as an imitation or replica,” she added.
Davies explained that the UK Court is bound by the ECJ’s decision; however, some aspects of the European ruling are open to interpretation.
“I will be very interested to see the decision of the UK Court,” she said.
Overall, however, she calls it a robust and positive decision for trademark owners and one ‘recognising their investment in their brands and recognising the smell-a-like producers’ efforts to ride on their coat tails.’