Julia Carretero February 6 2017 EU Trademark Court confirms that use of well-known trademarks to sell smell-alikes is infringing Grau & Angulo | Intellectual Property - European Union Julia Carretero Intellectual Property FactsDecisionCommentIn its judgment of October 13 2016, the EU Trademark Court Number 2 of Alicante has upheld a lawsuit filed by Carolina Herrera Limited, Puig France SAS, Gaulme SAS and Antonio Puig SA against Yodeyma Parfums SL for offering and marketing smell-alike perfumes identified by using comparison lists containing the plaintiffs' well-known trademarks.FactsThe plaintiffs sued Yodeyma for:using comparison lists containing the plaintiffs' well-known trademarks;providing distributors of Yodeyma's smell-alike products with these lists; andusing the plaintiffs' trademarks (eg, CAROLINA HERRERA, PACO RABANNE, NINA RICCI and JEAN-PAUL GAULTIER) in a search engine on Yodeyma's website to promote, offer and sell its smell-alike perfumes.Yodeyma did not deny the delivery of comparison lists to its suppliers who, in turn, used those lists at the points of sale.Yodeyma's main argument of defence was that the use of the plaintiff's trademarks was the only way to refer to the main characteristic (ie, the smell) of a fragrance already known to the consumer (the plaintiffs' products) by a specific name. Yodeyma argued that such use fell within the exception set forth in Article 12(1)(b) of Regulation 207/2009, and that such use was made for informative purposes.DecisionThe court declared that such use infringed the plaintiffs' trademarks, as it implied taking undue advantage of the reputation of the trademarks, and constituted free-riding.The judgment rejected the argument that such use was protected under the exception set forth in Article 12(1)(b), considering that the use of a third party's trademark in this context (ie, for selling smell-alike perfumes) went beyond the mere description of a product's characteristics. The difficulty of describing the olfactory characteristics of perfumes is inherent to the industry and has to be addressed by other means, such as the use of testers or the distribution of samples (as the plaintiffs do).As a second argument, Yodeyma alleged that the consumer's right to information and competition law are above the rights of the trademark owner. Therefore, in order to duly inform the consumer about the characteristics of its products (similar smell), it had the right to use third parties' trademarks.The court considered that there is no conflict between these rights and that they coexist harmoniously in the legal order, establishing a balance between the rights of some parties (the owners of exclusive rights) and the rights of others (the consumers and other economic agents) whereby the rights of one are limited by the rights of others.Additionally, the court declared that Yodeyma had committed acts of unfair competition by taking unfair advantage of another party's reputation and by unlawfully carrying out comparative advertising which presented the smell-alike perfumes as imitations or replicas of the plaintiffs' perfumes.Consequently, the court ordered Yodeyma to:cease and refrain from using the plaintiffs' trademarks in order to offer, market or promote its perfumes;withdraw from the market, cease supplying and destroy all materials, lists or means of identification containing such trademarks;remove the search engine using the plaintiffs' trademarks from its website;refrain from exploiting such trademarks in its commercial activity by any means (including sales-speak with clients or potential clients);compensate the plaintiffs for damages;publish the judgment; andpay the costs of the proceedings.CommentThis decision is clearly in line with the findings of the EU Trademark Courts Number 1 and 2, as established in various judgments, and with that of the EU Trademark Court of Appeal in its judgment of September 14 2015, which has now been declared final by a Supreme Court decision of November 16 2016.For further information on this topic please contact Julia Carretero at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected]). The Grau & Angulo website can be accessed at www.gba-ip.com.