L'oreal SA & Ors v Bellure NV & Ors

Trade mark infringement must be assessed by comparing the registered mark with the defendant’s sign in context. Similarity is a matter of degree and has no independent minimum threshold. Under section 10(2), confusion is required; under section 10(3), it is sufficient that the similarity creates a link, affects economic behaviour, and the mark has a reputation. Deliberately making a “smell-alike” benefit from the reputation of a fine fragrance may amount to unfair advantage, even without confusion. A disclaimer limits protection for the disclaimed feature, while a colour claim is not necessarily a disclaimer. Passing off still requires deception or misrepresentation; similarity of smell alone is insufficient.

The claimants, members of the L’Oréal Group, sued importers, distributors and wholesalers of low-cost “smell-alike” perfumes. They alleged infringement of registered word, bottle and packaging marks under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994, together with passing off.

The defendants’ products reproduced or approximated the scents of Trésor, Miracle, Anaïs Anaïs and Noa, but used different names and packaging. The central issues were the correct comparison between marks and signs, the effect of disclaimers and limitations, the requirements for unfair advantage, and whether the products or their marketing constituted passing off.

1. Trade mark comparison. The relevant comparison was between each registered mark and the particular sign, viewed globally and in context. Other products in the defendants’ range and similarity of smell were extraneous. Each mark had to be considered separately, although words appearing on a registered bottle or packaging mark formed part of that mark.
2. There was no minimum threshold of similarity under sections 10(2) and 10(3). Similarity was relative and had to be assessed by reference to the legally relevant effect. Under section 10(2), the necessary link was direct or indirect confusion. Under section 10(3), a link in the mind of the public was sufficient; confusion was unnecessary, but the link had to affect economic behaviour and the mark had to possess a reputation.
3. Limitations and disclaimers. The colour limitation on the Trésor packaging mark restricted protection to the specified colours, but not to their precise spatial arrangement. The disclaimer of exclusive use of the container device meant that similarity consisting only of the bottle shape did not infringe. The transitional provisions preserved the disclaimer when the earlier registration was transferred under the Trade Marks Act 1994.
4. Unfair advantage. Deliberate similarity in the name, bottle and packaging enabled the defendants to benefit from the investment and reputation of the claimants’ fragrances and to charge more than for their basic range. That was free riding and constituted taking unfair advantage. It also supplied no due cause. Infringement under section 10(3) was established for the original La Valeur box and original Pink Wonder bottle, but not their later versions.
5. Identical signs and honest practices. Use of the claimants’ word marks on comparison lists and in response to customers’ queries could describe a characteristic of the defendants’ goods, but it still had to comply with honest commercial practices. Deliberate free riding and taking unfair advantage prevented reliance on sections 10(1), 10(6) or 11(2).
6. Passing off. Passing off continued to require goodwill, a misrepresentation or deception, and damage or likely damage. The Court of Appeal’s observations in Arsenal Football Club v Reed were obiter and could not remove the requirement for deception. Reproducing a perfume’s smell was not itself passing off, and the names and packaging of Nice Flower and Sweet Pearls did not misrepresent their origin.
7. The claim succeeded only in respect of the original La Valeur box under section 10(3), the original Pink Wonder bottle under section 10(3), and use of the word marks on comparison lists and in response to customers’ queries under section 10(1). Apart from those matters, the action failed.

First-instance decision. The judgment records no appeal or earlier decision in the same proceedings.