SWEET SMELL OF SUCCESS FOR PARFUMIER

Sweet smell of success for parfumier

Yesterday Mr Justice Lewison gave judgment in the Chancery Division, England and Wales, in what the IPKat thinks will be a controversial decision in L'Oréal SA and others v Bellure NV and others [2006] EWHC 2355 (Ch).

The claimants, members of the L'Oréal group of companies, made up-market perfumes and beauty products. Bellure imported and distributed, in the UK, the Creation Lamis range of perfumes, which were made in Dubai. L'Oréal objected that the goods imported by Bellure - notably its 'Coffret d'Or', 'La Valeur', 'Pink Wonder', 'Nice Flower' and 'Sweet Pearls' branded products, were 'smell-alikes' which were sold in packaging that took unfair advantage of the names, packaging and brand image of its premium brand perfumes 'Tresor', 'Miracle', 'Anais Anais' and 'Noa'. This, argued L'Oréal, was contrary to section 10(3) of the Trade Mark Act 1994. L'Oréal also contended that Bellure's price and product comparison lists, which referred to L'Oréal's trade marks, infringed its rights under section 10(1) of the same Act. Passing off was also claimed.

The relevant bits of section 10 of the Trade Marks Act 1004 read as follows:

"(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered ...

(3) A person infringes a registered trade mark if he uses in the course of trade ... a sign which--(a) is identical with or similar to the trade mark, (b) where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark".

Lewison J dismissed the passing-off claim but allowed the section 10(1) and section 10(3) claims. In his opinion

* The 'La Valeur' box and the 'Pink Wonder' bottle, in their original incarnation, were sufficiently similar to those of 'Tresor' and 'Miracle' as to create an association in the mind of the average consumer. The marks in question enjoyed a reputation and Bellure's signs took unfair advantage of the character or reputation of the registered marks.

* The correct comparison was a contextual comparison between the mark and the sign. In this case the extent of the similarity was deliberate: the two fragrances chosen as comparators ('Tresor' and 'Miracle') were both well promoted and heavily advertised brands. Bellure had obtained a free ride on the reward for the cost of promoting, maintaining and enhancing L'Oréal's marks and this was an unfair advantage.

* Infringement, under s 10(3), had been established in relation to the 'La Valeur' box and the 'Pink Wonder' bottle in their original incarnation. Further, infringement under s 10(1) had been established in relation to the use of L'Oréal's word marks on the comparison lists and in response to customers' queries.

This is a long judgment, consisting of nearly 200 paragraphs, and the IPKat has not yet had the chance to digest it in full. However, he gets the feeling that, had Bellure been a little less blatant in what it was doing, it could have escaped liability entirely. He wonders how smell-alike perfume makers will adapt their business plans and marketing strategies in the light of this judgment.

Make your own perfumes here and here
Fragrance allergies here; worst perfume ever here
Body odour here