WHY IMITATION IS NOT THE HIGHEST FORM OF FLATTERY

L’Oreal SA & Ors v Bellure NV & Ors

A decision of the European Court of Justice following a reference from the Court of Appeal in L’Oreal SA & Ors v Bellure NV & Ors, may have implications for businesses marketing products as “look a likes” of famous brands. The decision effectively introduces a law of unfair competition which will prevent businesses “riding on the back” of famous brands to promote cheap imitations. However, it is likely to be restricted to well known brands, which have a reputation, protected by registered trade marks.

L’Oreal owns registered trade marks for the names and packaging of its Trésor, Miracle, Anaïs-Anaïs and Noa Noa perfumes (”the Marks”). The Defendants marketed perfumes claiming they were similar in smell to L’Oreal’s. The Defendants sold those products in bottles and packaging which were similar, but not identical, to the Marks. However, the degree of similarity would not mislead or confuse the public or affect the essential function of the Marks which was to guarantee the origin of L’Oreal’s goods.

Andrew Lee of ACID Accredited law firm McDaniel & Co. comments, “The Defendants admitted that their products were intended to give “a wink of an eye” to L’Oreal’s products. L’Oreal alleged the imitation of the names and packaging of its perfumes by the Defendants’ and the sale of those products in the imitative packaging took unfair advantage of, or was detrimental to, the distinctive character or the repute of the Marks and was trade mark infringement.”

The ECJ held that the taking of an unfair advantage of the distinctive character or repute of a trade mark did not require a likelihood of confusion or a likelihood of detriment to the distinctive character or repute of the trade mark, or harm to the owner. It was sufficient that the advantage arising from the use, by a third party, of signs similar to the trade mark was an advantage unfairly taken of the distinctive character or repute of the trade mark, where that use sought to “ride on the coat-tails” of the trade mark in order to benefit from the power of attraction, the reputation and the prestige of the trade mark and to exploit, without paying financial compensation, the marketing effort expended in maintaining the trade mark’s image by the owner.

We are all familiar with the “look a like” brands in supermarkets. Quite often you establish a link between the “look a like” and the famous brand but realise they are different products. Now, it seems those imitations may pay the price.

Andrew Lee of ACID Accredited Law Firm McDaniel & Co.

Andy 2

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