‘Sweet smell of success for Trade Mark Owners – Bad odour for consumers’ by Stephen Welfare

L’Oréal complained that Bellure and Others “smell-alike” products were marketed in a packaging which took unfair advantage of its own product names, packaging and brand image, contrary to the Trade Marks Act 1994 and corresponding EU Trade Marks Directive. L’Oréal also contended that comparison lists, comparing L’Oréal’s marked brands with the Defendant’s products, similarly took advantage of it’s registered trade marks when used to sell the Defendant’s products and when dealing with customers’ queries.

In the judgment handed down on 21st May 2010, the Court of Appeal upheld L’Oréal’s complaint. The court felt obliged to do so following an earlier ruling of the ECJ but was clearly unhappy at having to do so. Lord Justice Jacobs said “The ECJ’s decision in this case means that poor consumers are the losers. Only the poor would dream of buying the Defendant’s products. The real thing is beyond their wildest dream. 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.”

Stephen Welfare of Royds’ Intellectual Property Unit commented: “We may expect to see the continuation of price comparison websites and the likes of supermarkets using the comparative advertising rules, for the benefit of consumers shopping around for good value, but anyone now thinking of doing so to promote their goods or services must be very wary of comparing their products or their products characteristics to those of established brands.”