L’Oréal has won ongoing trademark suit to ‘regret’ of British judge

By Katie Bird

- Last updated on GMT

Related tags Trademark Law European union

A four year battle between L’Oréal and companies manufacturing ‘smell-alike’ fragrances has been brought to a close by the UK court of appeal, which has ruled in favour of the French cosmetics giant.

The case, against Bellure, Malaika Investments (Honeypot Cosmetic and Perfumery Sales) and Starion International was originally brought to the UK appeal courts in 2007, before a number of points were sent for clarification to the European Court of Justice (ECJ).

In the case, L’Oréal contends that the practice of using comparison lists - lists that compare L’Oréal’s trademarked fragrances to cheaper alternatives that smell very similar – constitutes trademark infringement.

In June 2009, the ECJ ruled that the use of price comparison lists is comparative advertising and not simply providing information. In addition, it ruled that even in cases where there is no confusion - when consumers know they are not buying the real thing - there is still infringement if the intention of the company is to free ride on the back of L’Oreal’s reputation.

Furthermore, it ruled that it was not necessary to prove that the trademark holder is damaged by the sale of copycat products; the intention to free ride on the part of the imitator is enough.

The case then returned to the UK court of appeal where the ECJ’s ruling has been interpreted.

Ruling in L’Oreal’s favour

Lord Justice Jacob ruled in favour of L’Oréal last week, but expressed ‘regret’ at the outcome.

“My duty as a national judge is to follow EU law as interpreted by the ECJ. I think, with regret, that the answers we have received from the ECJ require us so to hold,”​ he said in the judgement.

According to Lord Justice Jacob, the trademark law as it has been interpreted in this case is preventing defendants from telling the truth.

“Even though their perfumes are lawful and do smell like the corresponding famous brands, does trademark law nonetheless muzzle the defendants so that they cannot say so? I have come to the conclusion that the ECJ's ruling is that the defendants are indeed muzzled.”

The judge went on to express concern that it is consumers who stand to lose out from this judgement.

“Only the poor would dream of buying the defendants' products. The real thing is beyond their wildest dreams. Yet they are denied their right to receive information which would give them a little bit of pleasure; the ability to buy a product for a euro or so which they know smells like a famous perfume,”​ he said.

He also expressed concern that freedom of trade would be jeopardised by rulings such as this, explaining that if a trader cannot (when it is truly the case) say that his goods are the same as another brands but cheaper, important areas of trade will not be open to proper competition.

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