Infringement of Trade Marks for “Smell-Alike” replica perfumes – “Unfair Advantage” – References to European Court – Use of comparison tables – Art 5(1)(a), 5(2) and 6(1)(b) Directive 89/104 on Trade Marks 1988 – Passing off – Unfair competition
L’Oreal manufactured perfumes including TRESOR, MIRACLE, ANAIS ANAIS and NOA. Defendants sold perfumes that were not in competition with (different price and market sectors)but were intended to smell like and whose packaging resembled L’Oreal’s perfumes. They also produced comparison tables showing the word marks for L’Oreal’s perfumes against their own “smell-alike” products but did not suggest that their perfumes were anything other than cheap imitations of the original.
Whether the use of L’Oreal’s word marks in the comparison tables amounted to an infringement under Art 5(1)(a) and if it did whether such use was permitted by Art 6(1)(b); whether the packaging infringed; whether there was passing off and whether passing off should be extended into a general law of unfair competition.
The use of the comparison lists enabled the defendants to sell their products as smell-alikes but neither the image or the essential function of the trade marks for the originals was affected by the lists. Nobody was deceived and nobody thought any less of L’Oreal’s brands. CA referred to ECJ whether (1) use of the lists and (2) similarities in packaging took unfair advantage of and were in accordance with honest practices. No passing off. Even if open to the court to invent a tort of unfair competition it would not do so.
Trade mark lawyers grappling with the meaning and scope of the phrases “taking unfair advantage of” and “honest practices in industrial and commercial matters”, under Directive 89/104 Art. 5 and 6 in the context of replicas of luxury brands and use of comparison tables will welcome this reference to the ECJ.