Trade Mark Infringement – s.10(3) Trade Marks Act 1994 – No likelihood of confusion – ‘Link’ – Whether unfair advantage or detriment to the repute of the mark – Whether ‘free-riding’ enough – Similarity between mark and sign not similarity between products.
Bellure produced and sold under different names ‘smell-alike’ fragrances that imitated successful fine fragrances manufactured and sold by L’Oreal. Bellure’s product lists included reference to the name of the L’Oreal fragrance imitated. Bellure’s packaging gave “a wink of an eye” to L’Oreal’s packaging.
Where there was no likelihood of confusion for the purposes of section 10(2) of the Act, had Bellure nevertheless taken unfair advantage of the distinctive character and repute of the L’Oreal perfume marks so that infringement was established under section 10(3)?
The goods for which the infringing sign was used appealed to the public’s senses in such a way that the trade mark’s power of attraction was affected. There was a causative link betwen the application of the sign and the blurring of the mark. The way in which the entire Bellure range was manufactured and sold (1) ‘winked at’ L’Oreal’s packaging; (2) deliberately sought to emulate L’Oreal’s successful brands; (3) enabled Bellure to charge more for its range; and (4) benefitted from the expensive advertising and promotion carried out by L’Oreal.
The mere fact that one product has a free ride on another will not necessarily found liability for trade mark infringement. If the marks and the allegedly infringing signs do not have the necessary degree of similarity, that kind of free riding is legally permissable. However, here, part of the reward for the costs of promoting, maintaining and enhancing the L’Oreal trade marks had been received by Bellure. That amounted to “unfair advantage”. Deliberate free riding cannot amount to “due cause”.