Copycat perfumes and coat-tails: “unfair advantage” in the European Court of Justice

L’Oreal produces and markets a number of well-known fragrances, including the perfumes Trésor, Miracle and Anaïs-Anaïs.  L’Oreal is also the registered owner of a number of marks in relation to these perfumes, including word marks (such as “Trésor”) and figurative marks (covering representations of the bottles and packaging of the perfumes). 

Bellure and several other companies marketed imitations of L’Oreal’s perfumes.  Although the imitation perfumes were sold in bottles and packaging that were similar to the genuine perfumes, the perfumes were marketed under different names (such as La Valeur and Pink Wonder).  Because of this, the parties acknowledged that the defendants’ use of L’Oreal’s marks would not:

  • cause confusion, or otherwise jeopardise the trade mark’s role as an indication of origin; or
  • cause economic loss to L’Oreal.

One of the key questions for the ECJ was whether Article 5(2) of the EU Trade Marks Directive nonetheless applied.  Article 5(2) prohibits unauthorised use of a similar or identical trade mark that takes unfair advantage of the character or repute of a registered trade mark. 

The ECJ held that Bellure and the other defendants did take “unfair advantage” of L’Oreal’s registered marks, because the defendants sought to “ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark” and to exploit L’Oreal’s marketing efforts in creating and maintaining the mark’s image, without any financial compensation.

This decision provides useful clarification of the concept of “unfair advantage”, which until recently had been the subject of very little case law.  In particular, the decision draws a clear line between the advantage taken by an infringing party, and the detriment caused to the mark or to the mark’s owner, finding that either may suffice in establishing trade mark infringement.       

 

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