Defendant produced 3 “smell-a-likes” of 3 perfumes made by Claimant (L’Oreal). The names of each of the perfumes imitated was protected by a trade mark.
Claimant claimed that its trade marks relating to the 3 perfumes were infringed by:
Defendant’s packaging, which sought to imitate that of Claimant; however this claim dropped.
“Comparison lists” used by Defendant (i.e. lists on the back of packages indicating which of Defendant’s perfumes smelled like which of Claimant’s) - E.g. “Stitch No 7 smells like Trésor”
Held:
Judgement related to Article 5(1)(a)
In present case, use of trade mark was not descriptive (as in Arsenal FC), rather it was for comparative purposes
Thus was used for purpose of advertising
Article 5(1)(a)
“I have real difficulty” in dealing with the communication / advertisement / investment functions
Is nothing in legislation about them
Are conceptually vague and ill-defined
Appears to be that any comparative advertising is banned.
I.e. as it will automatically impinge on advertisement function.
Article 5(2)
Court appears to be saying that where advantage is taken of an earlier trademark, this is automatically unfair.
Thus is no distinction between:
Permissible free-riding
Impermissible free-riding
This amounts to pointless monopoly.
On basis of ECJ’s preliminary judgment:
Comparison lists breach Article 5(1)(a), as they adversely affect advertising function of Claimant’s mark
Comparison lists also breach of Article 5(2), as they take advantage of reputation of Claimant’s mark
IP law notes fully updated for recent exams at Oxford and Cambridge. Th...
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