Perfume and trade marks

Perfume makers win partial trade mark victory against smell-a-likes
OUT-LAW News, 11/10/2006

Perfume makers who sell smell-a-likes of famous brands only partially infringed the trade marks of large perfume houses, according to a High Court ruling. The perfume makers which took the case won it only in part.

L'Oreal, Lancome and Laboratoire Garnier claimed that a series of companies sold perfumes that not only smelled like some of their signature fragrances, but used packaging, names and styles that took unfair advantage of its own brands.

The perfumes which the companies thought had had their trade marks infringed included Anais Anais, Noa, Tresor and Miracle. The company claimed that seven companies manufactured products which infringed the intellectual property rights of its brands.

Justice Lewison ruled that premium perfume makers' passing off claims should not be upheld, but did rule in favour of them in relation to two sections of the Trade Marks Act. He said that the boxes of two of the smell-a-like perfumes 'La Valeur' and 'Pink Wonder' were sufficiently similar to Tresor and Miracle to take unfair advantage of the character or reputation of the trade marks.

Lewison said that any similarities did not amount to 'passing off'. The case also dealt with the use of the trade marked names of premium perfumes in sales material relating to the smell-a-likes. Salespeople had directly referenced the premium perfumes in the sales process of other perfumes, Lewison found.

The case did not deal with the actual smells of the perfumes, but perfume smells have enjoyed protection before. A Dutch court ruled earlier this year that the smell of Lancome's Tresor deserved copyright protection.

The Supreme Court in The Netherlands ruled in June that the blend of ingredients that went to make up Tresor represented an original work of authorship and therefore qualified for copyright protection.

In that case the court ruled that a smell-a-like was a deliberate imitation of Tresor and ruled against its manufacturers. That judgment confirmed a previous judgment by the Dutch Appeals Court.

See: The decision