A Scent of Change – Look-alike Perfumes

June 23, 2009

Have you ever seen cheap imitation perfumes on sale at market stalls or on the internet?  The ones that tend to look similar in their packaging or bottling to other up-market products? Well according to a recent decision of the European Court of Justice (ECJ) their manufacturers are in breach of trade mark law.
Under trade mark law, which derives from a European Directive, third parties are prevented from taking “unfair advantage” by using a sign identical or similar to a trade mark.

In 2007, L’Oreal sued Bellure and other look-alike perfume manufacturers for trade mark infringement. Lord Justice Jacob took the opinion that there must be harm of some sort to the trade mark owner for there to be an “unfair advantage”, however, it was accepted by all the parties that l’Oreal had not suffered any detriment, partly because both parties operate in different market tiers.

Lord Justice Jacobs asked the ECJ to clarify this point. On the 18 June 2009, the ECJ concluded that harm is not necessary for there to be an “unfair advantage” and it was sufficient to prove, in this case, that the defendant was “riding on the coattails” of l’Oreal’s established reputation and marketing effort.

The effect of this judgment is for l’Oreal to succeed in protecting their trade marks in a number of their perfumery products. However, some of the claims against the defendants will fail as the Court of Appeal did not consider there to be sufficient similarity (“link”) between all l’Oreal’s trade mark products and the relevant imitations.

In terms of the wider effects of this judgment, Lord Justice Jacobs would probably consider that EU trade mark law is becoming “over-protective” by intervening when there is no real harm. That being said, this approach harmonises the interpretation of “unfair advantage” in EU law and brings the UK in line with the consensus in Europe.