Trademarks are some of the many intellectual property rights that are protected under the UK property rights law. Specifically, trademarks are governed under the Trademarks directive. In the case at hand, L’Oreal v Bellure, who is the defendant produced fragrances that were similar in smell to those of the plaintiff Chic SARL who made expensive fragrances for the high-end markets. Loreals fragrances were however marketed in the low end markets and cut chemists so as to appeal to the low income earners. The intention of loreal was to ensure that her products appeared like expensive brands so as to increase their market (Mercer 2010)t.
L’Oreal brought a legal action against Belure on the grounds that they had taken advantage of the plaintiff’s investment in marketing their products, so as to ride freely by infringing on the trade mark so as to make sales from the use of the plaintiffs’ brand. Additionally, the use of the client’s trademark was causing confusion to clients, who experienced problems in identifying the genuine plaintiff’s brand and therefore the company was losing a lot of money as a result of this confusion (Mercer 2010).
The case was heard in the European court of Justice who gave their judgement. In their ruling, the judges noted that the judges noted that property laws need to be protected at all costs, and that at no point should a party lose their investments as a result of infringement. In their judgement, the judges noted that despite the suit, it was difficult to prove that the action by the defendant had caused confusion to the customers, but held that it was sufficiently proven that the plaintiff had suffered financial loss as a result of infringement of the trade Marks Directive, articles 5(1)a and (2) on the premise of double identity and free riding (Mercer 2010).
Their decision was premised on the fact that taking advantage of the good name and reputation enjoyed by a registered trade mark constitutes an actionable offence. The court explained that the use of others reputation with regard to registered trademarks would amount to giving an unfair advantage in a market, which would impact negatively to the spirit of intellectual property (Mercer 2010).
Interpretation of the law
In this suit, it is evident that scenting limited was in breach of trademarks directive. Comparison of their products with those of the plaintiff is a classical case of parties that use such comparison to gain undue advantage of others in the market. It depicts free riding of others investments for commercial advantage without taking cognisance of the established trademarks (Mercer 2010).
The absence of brand marks should make it difficult for the plaintiff to prove that there was confusion with regard to the perfumes sold by both the plaintiff and defendant. While confusion by association is recognized by the trademarks directive articles 5(1)a and (2).According to this article, in case of a situation where confusion of signs and marks is in question and can be proven, this can constitute an infringement of trademarks and is actionable in court (Mercer 2010).
The article also provides for the protection of product reputation. The European Union members for instance have always invoked a provision that allows for the protection of product reputation against imitation by other brands, and avoid taking advantage of registered trademarks. Consequently, the fact that Scenting limited took advantage of the reputation of the plaintiff’s products reputation can be actionable in court (Mercer 2010).
Normally, for a trademark’s reputation to be said to have been infringed, its provided for in the directive that the trademark must be popular, and must be known to the public. As explained in this case, Scenting Limited benefitted from the reputation of the plaintiff, and by their admission, their sales are quite high. They are therefore guilty of breach of this breaching a trademark as per section articles 5(1)a and (2) of the trademarks Directive (Mercer 2010).
It is unlikely that Scenting limited will be able to adequately defend herself against this suit, considering that they have explicitly infringed on the trademark of the plaintiff. I believe that in their defence, they have to try and prove to the judges that their branding of their products has not in any way caused confusion to customers with regard to plaintiffs products, and that they did not benefit from that trademark, which of course is not likely to succeed, or stand judicial scrutiny (Mercer 2010).
In order to strengthen their case, it’s imperative that scenting limited should also try and prove that they have not benefitted from the reputation of their plaintiffs products (Mercer 2010).
b)
Use of the name Desir
Under the trademarks and trade names regulations, trade names need to be registered under the UK intellectual property office. Before its registered, a number of issues have to be addressed, and this, among them is the fact that such a name should not have been used by any other person, or registered under the same office. Similarly, such a name should not be similar to any other, especially when the natures of products or business are similar. It’s only after registration that the exclusive rights for the use of the name Desir can be attributed to Scenting limited (Mercer 2010).
Just like the registration of a company name, a name search for the product needs to be done to ascertain the fact that there is no other claim laid on the product name in future. This is done to avoid potential future conflicts that may arise, as a result of the use of the trade name. The law does not allow the registration of a trade name that appears similar to an existing one. Its in this regard that a search needs to be done to ascertain the suitability of the name Desir, and specifically, such a name does not include producer, manufactures or sellers of perfumes (Mercer 2010).
A search on the European database reveals that the name Desir is not used by another company. However, there are quite a number of names bear the name that is almost similar to this. This happens since some names have Desir as part of the name composition. This however, does not mean that this name cannot actually be registered. It can be registered, but this can only be done if the similar names do not represent products that are similar to those of Scenting limited (Mercer 2010).
Therefore, it is notable that the company may be unable to register this brand name, as it may be detrimental to the company in future. In the event that the company goes ahead and registers this name, the company may face future legal liabilities as a result of suits accruing from the use of this name. It is therefore expected that the company would probably look for another name for her new product so as to ensure that she goes ahead with the product launch, and avoid possible future litigations (Mercer 2010).
Description
The description of the products smell ‘spice with a touch of citrus lemon’ may not be registrable either in this or another form, considering that this is an olfactory trademark. The law, as it stands does not have a provision for the registration of such product descriptions. However, the UK law has relied on judicial precedents to decide on cases touching on the registration of product descriptions (Mercer 2010).
Some of the most famous decided cases include the that of Channels who sought to register their Channel 5 as an olfactory trademark, giving it the description “scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamont, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent is also being known by the written brand name No 5.” This application failed since it was argued that the product shape should not result from the nature of the product itself (Mercer 2010).
In an attempt to register a fragrance applied to tyres, Sumitomo was the first one to succeed in the registration of olfactory trademarks. In the case, ‘‘a floral fragrance/smell reminiscent of roses as applied to tyres” was registered. As seen, this description is clear, that the smell should be that of floral (Mercer 2010).
In a moral recent case, John Lewis of Hungerford plc’s attempt to register an olfactory trademark failed a clear indication that there has been reluctance in the registration of olfactory trademarks. In their case, John Lewis attempted to register an olfactory trademark by describing the trademark as’ the smell, aroma or essence of cinnamon’. The judge noted that the smell of cinnamon is not strong enough to warrant registration and would easily be imitated. The judge therefore dismissed this issue on these grounds (Mercer 2010).
The preceding decided cases indicate that it would almost be impossible for scenting limited to succeed in her quest to succeed in the registration of her olfactory trademark. This is because their description of their trade name would not form a strong reasoning that would be a basis for the registration (Mercer 2010).
In conclusion, the company should seek other avenues of marketing its products to ensure that future occurrences of infringement of copyright law. Scenting should market its products in a manner which does not give any allusion or comparison to any other registered product. In this way, it will have dealt conclusively with all the potential suits that may occur as a result of copyright infringement. The company should also not register its product under the name Desir since based on the number of other products registered under the same name in Europe, there is a high likelihood that such a move may be improper and result in future conflicts regarding the use of the name as a trademark.
References
Aplin, Tanya; Davis, Jennifer (2009). Intellectual Property Law: Text, Cases, and Materials. Oxford University Press.
Bently, Lionel, "The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860-80)" in Lionel Bently, Jane C. Ginsburg & Jennifer Davis (eds), Trade Marks and Brands: An Interdisciplinary Critique (Cambridge University Press, 2008)
Bently, Lionel; Sherman, Brad (2009). Intellectual Property Law (3rd ed.). Oxford University Press.
Burrell, Robert; Coleman, Allison (2005). Copyright Exceptions: The Digital Impact. Cambridge Studies in Intellectual Property Rights. Cambridge University Press
Mercer, John, (2010) "A Mark of Distinction: Branding and Trade Mark Law in the UK from the 1860s", Business History.
