CTM Court: use of perfume trademarks to sell smell-alikes is unlawful

By a judgment of January 14 2015, the Community Trademark Court Number 2 of Alicante has upheld an action filed by Carolina Herrera Limited, Puig France SAS, Gaulme SAS and Antonio Puig SA - which are all part of the Spanish perfume and fashion group Puig - against several companies of the Saphir Group and a supermarket chain. The defendants offered and marketed perfumes under the brands Saphir, Caravan and IAP which allegedly smelt like fragrances identified by well-known trademarks of the plaintiffs.

The lawsuit was filed due to the use by the defendants of trademarks belonging to the plaintiffs, such as CAROLINA HERRERA, NINA RICCI, PACO RABANNE and JEAN PAUL GAULTIER, to promote, offer and sell their smell-alike perfumes.

Specifically, the judgment presented as proven facts that the Saphir Group companies made use of the plaintiffs’ signs in comparison lists linking their smell-alike perfumes with the plaintiffs’ trademarks; the lists were supplied to the retailers that distributed the products at the points of sale. Meanwhile, the retailers (eg, the supermarket chain acting as co-defendant in this case) sold the perfumes of the Saphir Group on their premises by using labels placed on the displays or shelves which also reproduced the plaintiffs’ trademarks, with expressions such as: “Olfactory information about the product. If you like [original perfume trademark], try Caravan No xx”. In some cases, the labels were supplied by the Saphir Group, while in others, they were made by the retailers themselves based on the comparison lists and verbal information about the equivalents provided by the Saphir Group.

The court declared that such use by the defendants infringes the plaintiffs’ trademark rights, as it implied taking unfair advantage of the distinctive character and the repute of the trademarks. The judge refused to apply the ‘fair use’ exemption - ie, where a third-party trademark is used to describe the product’s characteristics (in this case the smell) - since the use of the trademarks in this case went beyond mere descriptive use.

The court held that the objective was not to inform consumers of what the perfume smelt like (in the field of perfumery, this is performed through samples or testers made available to the public), but to transfer the connotations of prestige and quality of the plaintiffs’ trademarks to the defendants’ products.

The court also declared that the defendants’ actions amounted to acts of unfair competition, as they took unfair advantage of another party’s reputation, as well as unlawful comparative advertising, as the defendants presented the products as imitations or replicas of the plaintiffs’ perfumes, thereby free-riding on the reputation of the plaintiffs’ trademarks.

Accordingly, the defendants were ordered to cease and refrain from using the plaintiffs’ trademarks, to withdraw from the market, destroy and stop supplying all comparison lists or means of identification containing such signs, and to refrain from exploiting them by any means, both in writing and orally.

Carlota Viola, Grau & Angulo, Barcelona