Two new cases appear to have strengthened the legal position of producers of “copycat” products.

In a previous edition, we reported how in L’Oreal v Bellure, look-alike perfumes had been held by the High Court of England andWales to be “free-riding” on the efforts of the famous brand owners whose bottles they had copied. This was held to be taking “unfair advantage” and thus infringing the brand owners’ trademarks (under section 10(3) of the TradeMarks Act 1994).

However, in October this year, the Court of Appeal of England andWales held that although the look-alike products were no doubt free-riding on the image and reputation of the famous perfumes, this was not necessarily “unfair”. There was no real damage being caused to the famous brands, as no onemistook goods being sold on the internet and onmarket stalls for the real thing or changed their purchasing behaviour as a consequence. Neither did the Court of Appeal consider that the use of the real perfumes’ brand names in a comparison list would cause damage, finding that comparison lists that caused no real damage should be lawful and that Community law should not be “overprotective”. Nevertheless, a reference wasmade to the European Court of Justice for further guidance. The Court of Appeal did however agree with the trial judge’s refusal to consider a new tort of unfair competition as to do so would “truly have let the genie out of the bottle”.

The protection of packaging design was also the subject of the Court of Appeal’s attention in another case in October, Procter & Gamble v Reckitt Benckiser. P&G’s Community registered design for a trigger-operated air freshener (Febreze) was held to be valid but not infringed by a very similar looking air freshener canister fromReckitt (AirWick). The test to be applied to determine infringement under the Community Designs Regulation involves consideration of whether the second design does not produce a different “overall impression” to that created by the registered design on the “informed user”.

The Court of Appeal held that it is important to consider the overall impression of the two designs side by side, not a checklist of individual features thatmay ormay not match. P&G’s canister was held to bemore stylish with parts that curved and flowed into one another, whereas with the Reckitt canister the top and bottomparts were distinct from each other. This was enough tomake it non-infringing.

The Court also held that the relevant informed user is fairly sophisticated, being aware of the designs used in the design field, the difficulties associated with themand the degree of freedomavailable to a designer.Where design freedomis limited, a smaller difference may be enough to create a different overall impression. The informed user is also able to appreciate where designs are a particular shape to incorporate functional elements. These elements therefore should be ignored in any comparison.

Brand owners are increasingly protecting their packaging by registering designs and shapemarks. However, the UK Courts appear to be permitting the sale of “look-alike” products or packaging where there is no real damage threatened to the original products or where there are small differences in design which would be apparent to a designer (even if theymight not be noticed by the average consumer).