Publications

European IP Bulletin, Issue 36, November 2006 - Trade Marks

6. Look Alikes and Smell Alikes

On 4 October 2006, the English High Court, Chancery Division, handed down an interesting decision concerning trade mark infringement and passing off by “smell-alikes” and “look-alikes” in L’Oréal S.A v Bellure N.V  [2006] EWHC 2355 (Ch).
The Claimants are all members of the L’Oréal Group, a manufacturer of high quality beauty products. Among them are “Trésor”, “Miracle”, “Anaïs Anaïs” and “Noa” luxury perfumes, for which a number of UK and Community word and device trade marks are held. In this case, L’Oréal complained that the Defendants imported, distributed and marketed in the UK “smell-alike” products, the bottle and packaging of which intended to give “a wink of an eye” to the abovementioned successful fragrances.

First of all, the Court confirmed that, even if smells can theoretically be protected as trade marks, they cannot be granted protection under either copyright law or the tort of passing off in the UK. Moreover, since no likelihood of confusion had been established, it was unable to find trade mark infringement under ss 10(1) and 10(2) of the UK Trade Marks Act in relation to the bottles and packaging of the “smell-alike” perfumes.

However, L’Oréal did establish trade mark infringement with regard to the Trésor packaging mark and the Miracle bottle mark, under s 10(3). Having concluded that the trade marks in question already enjoyed a reputation in the marketplace, the Court found that the Defendants’ respective products were sufficiently similar as to give rise to an association in the mind of the average consumer. Thus, even in the absence of any evidence of confusion, there was a deliberate intention by the Defendants to take unfair advantage of and “free ride” on the back of the famous brands. Finally, the passing off claims failed as there was no deception or misrepresentation involved.

This case is significant in that it confirms that taking unfair advantage of another product’s reputation can amount to trade mark infringement, without the need to establish any likelihood of confusion. The latter, however, is one of the main conditions to prove passing off. This difference emphasises the importance of trade mark registration. Thus, brand owners, bearing in mind the difficulty of protecting smells, should rely on the registration of the packaging and get-up of their perfumes in order to protect them from look-alike products. Manufacturers, on the other hand, should make sure that their products and packaging do not mimic already famous brands and that they do not seek to benefit from their reputation.

7. Reckitt & Colman LTD - Appeal For “Bladeless"

On 5 September 2006, the Second Board of Appeal of the Office of Harmonization of the Internal Market (OHIM) annulled an examiner’s decision which declined the eligibility of BLADELESS as Community Trade Mark.

Reckitt & Colman had applied for “BLADELESS” as a Community Trade Mark in classes 3, 8 and 21, which covered cosmetics, non‑medicated toilet preparations, depilation preparations, cosmetic spatulas, and household utensils.  The application was refused by the examiner on two grounds:

1. When the mark was placed in the context of the claimed goods, without any additional element that could be regarded as fanciful, it did not perform the essential function of indicating the origin of goods and therefore was devoid of any distinctive character under Article 7(1)(b) of Council Regulation 40/94/EEC.
2. The mark did not enable a consumer to make a decision on the purchase of a particular product from among the competing goods and so the mark should remain free for use by other competitors.

Reckitt & Colman applied for an annulment of the decision on the following grounds:

1. Since its relevant products did not contain blades, “BLADELESS” was a fanciful term for the goods applied for and so the mark was capable of distinguishing its goods from its competitors.
2. The mark was also registered in the United Kingdom without the need to prove distinctiveness. If this was the case in an English-speaking country, then it should also be so in other European countries.

The Board explained as in the case of Rewe Zentral AG V OHIM (T-79/00), that signs which were devoid of distinctive character were those incapable of performing as trade marks to identify the origin of goods. Whilst there were some circumstances in which “BLADELESS” would be descriptive, none of the goods in question could sensibly have “BLADELESS” attached to them.  On that basis, the mark was therefore meaningless in relation to those goods, and so not void under Article 7(1)(c).  Further, as the idea of “bladeless” goods such as these was fanciful (“bordering on the bizarre in some cases” – paragraph 11), there was no basis for saying it could not act as a badge of origin.  The examiner’s decision was therefore annulled.

This decision gives interesting guidance on the boundaries of non‑descriptive and distinctive marks, and demonstrates the importance of selecting the correct class for a trade mark application.

8. Stonygate 48 Limited and Wayne Mark Rooney v. Huw Marshall

This case was an Administrative Panel Decision by WIPO Arbitration and Mediation Centre. 

The Complainants in this case were Stoneygate 48 Limited (“the First Complainant”) and Wayne Mark Rooney (“the Second Complainant”). The Respondent was Huw Marshall (“the Respondent”).

The First Complainant, a company incorporated in England on February 22, 2002, is the registered proprietor of Community Trade Mark number 00298905 dated December 23, 2002, WAYNE ROONEY (words) covering a variety of goods and services. The Second Complainant assigned to the First Complainant his trade mark rights, along with certain other image/merchandising rights in January 2003. The Second Complainant is a very famous professional footballer in England. The Respondent who is an actor, registered the Domain Name waynerooney.co.uk on 16 April 2002.  At the date of the Complaint, the Domain Name was connected to a directory site operated by the Registrar which featured links to a variety of other sites ranging from football related sites to on-line dating sites.

For this Complaint to succeed, the Complainants had to prove that:

1. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. The Domain Name was registered in bad faith and is being used in bad faith.

Regarding the identical or confusingly similar, the Panel referred to the passage in paragraph 1.4 of the World Intellectual Property Organisation (WIPO) Overview of WIPO Panel Views on Selected Uniform Dispute Resolution Policy Questions and found that the Domain Name was identical to a trade mark in which the Complainants have rights. Regarding rights or legitimate interests, the Panel further found there were no legitimate interests for the Respondent to the Domain Name. In relation to the issue of bad faith registration, the Respondent argued that he had registered the Domain Name, knowing it to be the name of the Second Complainant, the name under which the Second Complainant carried on his profession, and intending to use it to connect to a commercial website. The Panel was not convinced of this explanation and ordered that the Domain Name waynerooney.com be transferred to the Complainants.

 

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