In a seminal case brought by leading perfume brands against ‘smell-alikes,’ Lewison J has confirmed that comparative use of competitors’ registered trade marks has to toe the Comparative Advertising Directive line to avoid infringement.
Topic: Brand protection and comparative advertising
Who: L'Oréal and Others v Bellure and Others
Where: High Court
When: October 2006
L'Oréal, together with its fellow group companies, Lancôme and Laboratoire Garnier, brought a High Court claim for trade mark infringement and passing off against a manufacturer and two distributors of look-alike and smell-alike perfumes.
The claim was not about the fact that the defendant's products smelled like L'Oréal's products, as it was accepted that in the UK there was nothing unlawful about merely reproducing the smell of a particular perfume (except in the rare case where a scent has been registered as a trade mark). Rather, the argument concerned whether the smell-alikes took unfair advantage of the reputation of the L'Oréal brands either (1) by the use of similar names and packaging or (2) in the manner of their sale, specifically by comparing the smell-alikes with the L'Oréal's brands on comparison price lists.
On the first issue, Judge Lewison found that the packaging of two of the smell-alike products was sufficiently similar to two of L'Oréal's registered marks to cause an association or link in the mind of the average user (albeit not so as to cause confusion). Furthermore, the reason for the similarity was deliberate: it was intended to "wink at" the packaging of the premium brands in order to take advantage of the character or reputation of those marks. In so doing, the defendants received some of the reward for the costs of promoting, maintaining and enhancing the trade marks, which amount to "free riding" or taking an unfair advantage. Accordingly, the judge found that the defendants had infringed section 10(3) of the Trade Marks Act 1994 ("TMA").
On the second issue, the question was whether the practice of producing comparison price lists, indicating which of the defendants' products smelled like which of the L'Oréal's brands, was in accordance with honest commercial practices. As we reported in the earlier case of O2 v 3, the defence under section 10(6) of the TMA is now the same as under the comparative advertising directive, i.e. it is only permissible if the advert does not, among other things, "take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products". Given the defendants' intention to "free ride" on the back of L'Oréal's reputation, the Judge concluded that the use of the L'Oréal brand names on the comparison lists constituted an infringement under section 10(1) of the TMA.
Why this matters:
This case establishes in English Law that 'free riding' on the back of a brand's reputation is unacceptable, even where there is no confusion in the mind of the consumer as to the origin of a particular product. It shows that the courts recognise the considerable investment made by brand owners in developing and maintaining a brand image and lays down a marker as to what competitors can and can't do in comparing their products with those of the brand owners.