In another trade mark dispute involving L’Oreal in the UK, L’Oreal brought proceedings against Bellure and others claiming trade mark infringement, passing off and very unusually for a UK action, unfair competition.

L’Oréal is a manufacturer of high quality perfumes and other beauty products aimed at the “luxury” end of the perfume and cosmetics market, and sold under well-known brands including L’Oréal, Lancôme and Cacharel. The defendants had developed a business importing, distributing and selling a range of perfumes (“Création Lamis”) which comprised copies of some of L’Oréal’s products; these copies were not counterfeit in the normal sense, but were “smell-alikes” and were marketed in packaging which L’Oréal alleged took advantage of its products’ names, packaging and brand image. It was accepted that there is nothing unlawful in imitating a smell, but the design of the defendants’ products was calculated to help customers recognise what the perfume would smell like. The brands in question included the L’Oréal brand “Trésor”, which the defendants’ product “La Valeur” was alleged to be a copy, and “Miracle” to which the defendants’ product “Pink Wonder” bore a strong resemblance in “get up” and smell.

Lewison J found that the reputation of the L’Oréal brands was to a large extent the result of heavy and expensive promotional activity over many years. This included advertising campaigns and the use of selective distribution to protect the reputation of the brands. Each of the L’Oréal products which were the subject of the action comprised very stylised and distinctive packaging – the judge went into considerable detail to demonstrate the originality and distinctiveness of each of the products in question.

The claimants established trade mark infringement under Section 10(3) Trade Marks Act 1994 (equivalent to Article 5(2) Trade Marks Directive) in relation to product livery and bottle shape, and under Section 10(1) Trade Marks Act 1994(equivalent to Article 5(1)(a) Trade Marks Directive) in relation to the use of certain word marks on comparison lists (the lists which indicated which of the defendants’ range of products smelled like each of the premium brands) and when dealing with customers’ queries.

The finding of trade mark infringement under Section 10(3) Trade Marks Act 1994 is likely to be viewed with particular interest. Lewison J found that the “La Valeur” box and the “Pink Wonder” bottle were sufficiently similar to “Trésor” box and “Miracle” bottle respectively (see above) to create an association in the minds of the average consumer, thereby satisfying the “identical or similar” requirement. The L’Oréal marks enjoyed an established reputation in the United Kingdom, and the defendants took unfair advantage of that reputation not only by using the marks to enhance their own business but also by profiting from the advertising and promotion of L’Oréal’s fine fragrances (so called “free-riding”). He stressed that free-riding can be legally permissible if the signs do not have the necessary degree of similarity – the key similarity is that between the sign and the mark, not any similarity between the products. He referred to the O2/Hutchison case and the requirement to consider a sign in context, confirming that the law has moved away from the rigidity of a “mark for sign” comparison. The context here did not include the smell of the contents which comprised neither the sign nor the mark. In this case, the extent of the similarity between the products in question was deliberate – he found that the infringing products “winked at” consumers to create the association with the premium brand. Although sales of the premium products had not been materially affected, it was accepted that in due course, sales could be affected and the reputation of these brands could be damaged by the sale of confusingly similar products in down market outlets.

The defendants used identical signs to L’Oréal’s registered marks in comparison lists and in correspondence with customers. They sought to defend such use under the Comparative Advertising Directive but this defence was rejected because the use did not fulfil the various conditions set out in that Directive. In particular since the defendants were taking unfair advantage of the reputation of the registered marks, the use fell outside the “honest practices” condition.