London, 4 October 2006 – LAWFUEL – UK Law News – Baker & McKe…

London, 4 October 2006 – LAWFUEL – UK Law News – Baker & McKenzie, London has acted for L’Oréal and Lancôme in its landmark win in protecting its trade mark rights against Bellure NV and other wholesalers and retailers of look-alike and smell-alike fragrances.

The High Court case, argued on the basis of trade mark infringement and passing off, involved products of L’Oréal’s fragrance divisions Lancôme and Cacharel.

In his judgement, Mr Justice Lewison concluded that the reputation of Lancôme’s Tresor and Miracle products in the UK was such that the sale of products designed to mimic them were infringing, even in the absence of evidence of confusion.

Key findings of the judgement were:

• Tresor and Miracle have a reputation in the bottle and packaging of the perfumes. The judge held that mimicking a brand by taking elements that cause a ‘link’ to be made with the brand leader that affects the economic behaviour of the consumer, can now be sufficient to find infringement.

• There was a deliberate intention to benefit from the advertising and promotion that had gone into building the Tresor and Miracle brands, and this amounted to taking ‘unfair advantage’ of the trade marks. Mr Justice Lewison found this, despite the fact that he did not find any evidence of actual or even a likelihood of confusion arising. He went on to confirm that there is no ‘minimum threshold’ of similarity required, but that it is a question of degree in every case.

• The judge also found that the practice of selling the smell-alike products by reference to the brand names of the perfumes imitated on comparison lists was also infringing. Mr Justice Lewison concluded that it could not be in accordance with honest commercial practices, given the intent to ‘free ride’ on the back of the fine fragrances.

• The judge ordered an injunction, an enquiry as to damages, delivery up and disclosure in respect of the trade mark infringements – despite the fact that the passing off arguments did not succeed.

Paul Rawlinson, partner at the Baker & McKenzie team, commented: “This is a significant judgement for brand owners and the first successful trial under section 10 (3) of the Trade Marks Act. The judge held that ‘free riding’ off a brand’s reputation is not an acceptable practice. Infringement, even without the existence of any likelihood of confusion, is a novel concept in the UK and one that the market will have to get used to.

“This landmark judgement is recognition that English law is now prepared to give due weight to the investment that goes into building and protecting a brand, bring us more in line with the rest of Europe. It will add fuel to the debate on the need for our common law of passing off to evolve and catch up with unfair competition regimes in the rest of Europe. Those countries tend to be much more familiar with concepts of brand dilution and tarnishment,” he added.

The Baker & McKenzie team was led by Paul Rawlinson, with associates Peter O’Byrne and Wendy Pang. Henry Carr Q.C. and Jacqueline Reid were counsel appearing for L’Oréal.

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