'Smell-a-like' and 'Look-a-like' perfumes prevented from "riding on the coat-tails of famous brands

The European Court of Justice recently resolved two references from the English courts regarding smell-a-like and look-a-like perfumes and packaging and found in favour of the brand owners.

The references were in respect of the Trade Marks Directive and the Misleading and Comparative Advertising Directive.

The Comparative Advertising Directive permits comparative advertising so long as it does not take unfair advantage of the competitor’s reputation or mark and does not present the goods advertised as imitations of those bearing a protected trade mark.

The Facts

The defendants manufactured and sold perfume that smelt like famous brand fragrances at very cheap prices. The defendants marketed these smell-a-like fragrances in packaging that hinted at a connection with the packaging used for the particular famous brand, but without causing any deception or confusion. As a defence witness said in the trial at first instance, they “winked” at the famous brand. In addition, to assist retailers, the defendants circulated lists identifying the famous brands and the equivalent “smell-a-like” fragrance. In these lists, the brand owners’ perfumes were identified by their registered trade marks.

One of the brand owners, L’Oreal, sued for trade mark infringement in the English courts which found that the use of the trade marks of the brand owners in the comparison list, amounted to infringement under the Trade Marks Act 1994 and that some of the look-a-like packaging also infringed.

The defendants appealed. The Court of Appeal considered that there was no likelihood of confusion and that, therefore, there could not be any infringement. The Court of Appeal asked the ECJ a series of questions intended to elicit the meaning of the words “unfair advantage” and how this was to be interpreted.

The Decision

The ECJ decided that where a third party looks to benefit from a well-known trade mark by “riding on its coat-tails” then that will be taking unfair advantage, even though no confusion and no damage, or likelihood of damage, to the reputation of the trade mark is shown by the brand owner to have occurred.

To benefit from this ruling, what is needed is a reputation in the trade mark. This is, therefore, a boost to owners of famous brands in protecting their marks against third parties who try to take advantage of them - even if no-one is deceived.

This ruling appears to introduce into English law a concept alien to the common law, but well-known in the civil code systems of Europe, of “unfair competition”. It will be interesting to see how the English courts deal with this.

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accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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