Alert 329 L'Oréal v Bellure - lookalikes face trade mark infringement


In a clear judgment, the ECJ has made it easier for owners of well-known trade marks to stop competitors selling imitations. There will be no need to show that customers are confused.

Any unfair advantage gained from the promotion and sale of imitation products, including from comparative advertisements for such imitations, which use those marks, will lead to trade mark infringement.

Background
L'Oréal owned various well-known trade marks for its perfumes' names, bottle shapes and packaging, including Miracle and Trésor.  The defendants sold imitations of those perfumes, in imitations of their packaging, though with different names.  They also produced comparison lists, to compare the smell of the imitations with the smell of the well-known perfumes.  Customers were not confused.

L'Oréal sued for trade mark infringement in the English Courts, which referred various questions to the ECJ on when such use would amount to infringement.

The ECJ referred to the following in its judgment:
  • that it was apparent from the order for reference that the similarities in packaging and bottle shape were intentional, to help market the imitations;
  • that the defendants accepted that the similarities were intended to take advantage of the mark; and
  • that the object and effect of the comparison lists were to draw customers' attention to the original fragrance which was being imitated.
Findings
A third party takes unfair advantage of a well-known mark if he uses a similar sign to ride on its coattails, without payment, to benefit from its power of attraction, and gains an advantage from doing so.  Presenting goods as imitations in comparative advertisements is unlawful under the Comparative Advertising Directive, so any advantage gained by use of L'Oréal's marks in the lists must result from unfair competition and therefore be an unfair advantage.

Our Comment
The judgment only applies to registered trade marks with a reputation, not all trade marks.

It will be worth registering product packaging and shapes as trade marks, and nurturing customer recognition of them.  For those selling lookalike goods, care will need to be taken in future to ensure that no well-known trade marks are infringed.

Although the ECJ did not specifically say that the defendants infringed, it came extremely close.  Unless a defendant can show that it gained no advantage from selling imitations, it is likely to infringe a well known mark.  Indeed, we suspect that if a defendant has tried to take advantage, the court will assume it has succeeded.

This judgment does not affect passing off, where there will still need to be a misrepresentation to bring a successful action.