L’Oréal v Bellure is well known in the UK as a case in which the Defendant had been selling the Création Lamis range: ‘smell-alikes’ of established fine fragrances. L’Oréal’s claim, based on trademark infringement, was only partially successful. The names of the smell-alikes were found not to be confusingly similar to the names of L’Oréal’s fine fragrances, though they made some allusions to them. So, for instance, ‘Coffret d’Or’ (rather loosely translated as Treasure Chest) was the smell-alike of ‘Trésor’ (Treasure).
Some of the Defendant’s packaging was alleged to infringe marks consisting of drawings of perfume bottles or packaging and alluded, more or less strongly, to the packaging of the Claimant’s perfumes. Much of the packaging initially complained of had been dropped before the trial – but the revamped packaging still ‘winked’ at the L’Oréal products. For example, ‘Pink Wonder’ was the name of a smell-alike sold in a light purple box alleged (unsuccessfully) to be similar to the pink box used for the ‘real’ perfume, ‘Miracle’, a dual conceptual ‘wink’.
Whiff of deception
L’Oréal also complained of product comparison lists that featured both parties’ goods, showing which fragrances the Defendant’s scents resembled. L’Oréal claimed that both the packaging and the comparison lists took an unfair advantage of the repute of its marks. L’Oréal further claimed, unsuccessfully, that it was not necessary to prove any misrepresentation to succeed in a passing-off claim, but only to prove unfair competition – or that the smell-alike perfumes were ‘instruments of deception’.
In 2009, Europe’s Court of Justice (CJ) ruled that the advantage taken of a mark with a reputation may be unfair – even if there is no detriment to the distinctive character or repute of the mark – where there is a ‘transfer of the image of the mark’ to the Defendant’s goods. The packaging used by the Defendant had been created intentionally to benefit from the power of attraction of the famous mark, and fell within sub-section 10(3)/Article 5(2).
The CJ also considered the impact of the Comparative Advertising Directive 2006 (‘the CAD’) on the comparison lists. The CAD permits comparative advertising that makes objective comparisons of goods or services, but it must not mislead – or, in particular, present goods or services as imitations or replicas. If the Defendant’s comparison lists explicitly or implicitly presented the smell-alikes as imitations or replicas, any advantage gained by doing so would be unfair, and they were not legitimate comparative adverts. As such, the CJ ruled that the comparison lists cited by L’Oreal constituted infringement.
In Germany, the CAD was implemented via the German Unfair Competition Act (UWG), Section 6, covering advertising that explicitly, or by implication, identifies a competitor or a competitor’s goods or services. It bans unfair comparative advertisements; comparative advertisements that take unfair advantage of the reputation of a mark; and those which indicate that goods or services are imitations or replicas of goods or services bearing a protected trademark. Section 4(9) UWG also bans sales of imitations or replicas of a competitor’s goods or services which would mislead customers etc.
Proceedings brought in Germany, again in relation to Création Lamis smell-alike goods, alleged breach of these provisions of the UWG. The Defendants had ceased their earlier use of comparison lists – like those found to infringe Article 5(2) in L’Oréal v Bellure – but were alleged to continue to present their goods as imitations of the Claimant’s goods.
One might well have thought that in Germany, with its well-established unfair competition rules, it would have been possible to prevent the Defendant from selling smell-alike products designed to imitate well-known perfume brands.
However, the claim failed in the lower courts and, following an appeal to the Bundesgerichtshof (case no: I ZR 157/09), it was decided on 5 May that the lower courts were not wrong to find that there was no unfair competition under Article 6 of the UWG, where the Defendant’s products alluded to the original brands, but were not definitely stated to be imitations of them. That provision is not aimed at preventing imitation of products as such: this point is reminiscent of comments made by Lord Justice Jacob in L’Oréal that ‘it is lawful to make and sell a smell-alike product’ and, after the CJ’s ruling, ‘even though their perfumes are lawful and do smell like the corresponding famous brands, does trademark law nonetheless muzzle the Defendant so that it cannot say so?’
The test under the UWG appears to be how far the relevant public would see the Defendant’s products as a ‘clear and obvious’ imitation, or whether there was merely an allusion to the famous brand. A distinction might be drawn between the impact on members of the general public and on better-informed retailers – who might recognise the product as a clear imitation, and might also see an unfair advantage being taken of the famous brand. As the latter point had not been considered by the court below, the Bundesgerichtshof remitted that issue for further consideration.
Amanda Michaels is a barrister at Hogarth Chambers