L’Oréal is suing some replica fragrance producers who market their “smell-alike” products by means of comparison lists and, in some cases, in packaging similar to L’Oréal’s packaging for itsTrésor, Miracle, Anaïs Anaïs and Noa brands.
There is nothing illegal about producing a fragrance which smells like a luxury fragrance and selling it in corner shops and market stalls for £1 instead of in top department stores for £60. L’Oréal is trying to stop the cheap replica fragrances from using packaging which in some cases “gives a wink” to its own packaging. It is also trying to stop them from marketing the replica fragrances by means of comparison lists circulated to the trade. These lists set out the names of the fine fragrances which the replica ones smell like. The names have been registered by L’Oréal as trade marks and L’Oréal claims that the comparison lists infringe its trade marks.
Mr Justice Lewison in the High Court agreed that, although not in competition with L’Oréal’s fine fragrances, the replica brands were taking a “free ride” on their back by using the word marks. (The global costs of developing a fine fragrance are between Euro 60m and Euro 120m.) The two replica brands remaining in the action appealed and the Court of Appeal decided to refer a number of questions to the European Court of Justice (ECJ). Trade mark law is now very much a European matter and the ECJ answers questions referred to it on the interpretation of the Trade Marks Directive that national courts then apply across the EU.
In some ways this case is itself a replica of the trade mark infringement proceedings by O2 in respect of H3G’s comparative advertising featuring O2’s bubbles. Both cases were first heard by Mr Justice Lewison and both have now been referred to the ECJ by Lord Justice Jacob, the UK’s top IP judge. One of the questions referred by Lord Justice Jacob in the L’Oréal case is essentially the same as one of the O2 questions. To paraphrase, can this type of comparative use of a trade mark ever infringe that trade mark if there is no confusion about the origin of goods or services?
In both cases, Lord Justice Jacob has expressed his own view that European trade mark law should not be over-protective. Both cases, in his view, raise important issues involving “the philosophy of how competitive the law allows European industry to be.” The Court of Appeal in both cases has been in favour of less restrictive interpretations of trade mark law than the ones brand owners are looking for, but the outcome of both cases now lies with the ECJ.