Partial success for L'Oréal in smell-alike case

The High Court of England and Wales has issued a decision in a perfume smell-alike case that is likely to be controversial. The case does not appear to be much of a direct commercial success for the plaintiff, L'Oréal SA, as (i) the packaging of goods complained of were changed sometime ago, and (ii) the judgment found only three counts of infringement in favour of L'Oréal, but dismissed the majority of its claims. However, it does send a strong message to competitors that produce smell-alike perfumes to ensure that they do not take unfair advantage of "the reward for the costs of promoting, maintaining and enhancing a particular trademark" by their packaging and promotional behaviour. Simply changing the word mark is not sufficient.

L'Oréal is a manufacturer of high quality perfumes and other beauty products. Among its global brands are L'ORÉAL itself, LANCÔME and GARNIER. The essential complaint was that the defendants were importing, distributing and selling copies of some of L'Oréal's luxury products. The copies were not imitations in the sense of being counterfeits, but smell-alikes marketed in packaging which L'Oréal claimed took unfair advantage of its own product names, packaging and brand image. L'Oréal complained under the headings of trademark infringement, passing off and unfair competition.

The results are summarized in the table below:

L'Oréal product/trademark	Smell-alike product	Decision
Packaging mark Bottle mark disclaiming rights to the container TRÉSOR word mark	Coffret d'Or	No infringement No passing off
	La Valeur (old packaging)	Infringement of packaging mark under Section 10(3) of the Trademarks Act 1994 No passing off
	La Valeur (new packaging)	No infringement No passing off
Bottle mark Packaging mark MIRACLE word mark	Pink Wander (old packaging)	Infringement of bottle mark under Section 10(3) No passing off
	Pink Wander (new packaging)	No infringement No passing off
NOA word mark	Sweet Pearls packaging	No infringement No passing off
ANAIS ANAIS word mark	Nice Flower (old packaging)	No infringement No passing off
	Nice Flower (new packaging)	No infringement No passing off

Further, infringement under Section 10(1) was established in relation to the defendants' use of L'Oréal's word marks (i) in lists comparing their perfumes with those of L'Oréal, and (ii) in certain responses made to customers.

The judgment provides an interesting analysis of the convergence of passing off, the different types of infringement and the defence relating to comparative advertising, as well as protection for smell (there is none) and an analysis of the differences between claims, disclaimers and limitations on the Trademarks Register. An interesting point of law is that the UK courts have now acknowledged that the test for similarity of marks under Section 10(3) (dilution) is different to that under Section 10(2) (likelihood of confusion).

Darren Olivier, Field Fisher Waterhouse LLP, London