Our London IP team has secured a landmark decision for our client, L’Oreal, from the European Court of Justice (ECJ) which gives rights holders further protection for their brands. The case was challenging because though the defendant used similar packaging and included comparison lists for its smell-alike perfume, it was not a straightforward use of L’Oreal’s actual trademarks and there was no likelihood of confusion. Our team, however, was able to show that the defendant’s tactics were unacceptable.
Our team won the UK High Court case in 2006 and represented L’Oreal in the subsequent proceedings before the UK Court of Appeal, which referred the matter to the ECJ.
In 2009, the ECJ ruled — in clear terms — that where a registered mark has a reputation, it is not permissible for another to "free-ride" on that reputation, even if the defendant's actions do not cause confusion or damage the mark holder. The use of comparison lists constitutes impermissible free-riding and is not legitimate comparative advertising where the product being compared is an imitation or a replica of the rights holder's product. Finally, the ECJ confirmed that trademarks have other functions apart from their traditional "badge of origin" function, including those it described as of "communication, investment or advertising."
"This decision is important as it provides consumers with better protection from infringements, and will prevent certain enterprises from unduly profiting from the investments, knowledge, and innovations of other creative companies," L’Oreal said in an emailed statement to Bloomberg.
The decision has already been hailed in the press as the dawn of a new law on unfair competition in the UK. "L'Oreal…won an important legal battle against a copycat rival, opening the way to similar claims by other owners of big brand names. The judgment…will help big companies in sectors from technology to pharmaceuticals," reports the Financial Times.