The case of the look-alike/smell-alike perfumes returns to the Court of Appeal in March, after its reference to the European Court of Justice. The Court of Appeal must now apply the ECJ’s guidance to the facts of this case. In his original judgment, Lord Justice Jacob found that the comparison lists and packaging adopted by Bellure did not cause confusion or damage to L’Oreal’s trade marks. On this basis, the Court of Appeal gave a strong steer that Bellure’s activities did not infringe under the provisions giving trade mark owners extended protection, for taking unfair advantage of the reputation of the trade mark. The ECJ’s decision appeared to broaden the grounds upon which a trade mark owner could claim damage to the trade mark’s functions (not just as a badge of origin), such as quality, communication, investment or advertising. In addition, any form of free-riding by a defendant may amount to infringement. Recent UK decisions have not been as generous, so the Court of Appeal’s judgment will be of critical importance to global brands seeking to enforce their rights against competitors who seek to “piggy-back” upon the value and investment in their trade marks.

For more detail on the ECJ decision see our IP newsflash available on our website at http://www.herbertsmith.com/NR/rdonlyres/CF5C5D83-F34F-4584-95D677250B993EBD/11432/Lookalikesmellalikefallfouloftrademark18June2009.html.