L’Oreal v Bellure (2010) was decided by the European Court of justice. This decision of the court was to the effect that taking advantage of the reputation enjoyed by an earlier trade mark constituted an actionable offence. The decision of the court makes an offer for the increased protection of trademarks of well established market brands. The rationale issued by the court for the decision is on the premise that use of reputations of trademarks is essentially giving an unfair advantage since it is similar to gains principal in restitution law.
In the case of L’Oreal v Bellure, the defendant produced a range of fragrances which were similar in packaging with the product of the plaintiff which were in the higher market segment. The defendant’s products were priced for the lower end of the market and were merchandised in discount stores and in street markets. This situation ensured that the probability that there would be confusion among customers between the two products was low. However, the products of the plaintiff were labelled in such a manner as to emphasize on the equivalence of the smells of the products. Bellure actively promoted these imitations by making express reference to the ability of its product to match in equivalence the products of L’Oreal.
As a result, L’Oreal brought legal action against Bellure on two grounds. It claimed that the perfumes manufactured by Bellure were damaging to its business through the creation of confusion among customers. It also claimed that that Bellure had taken advantage in the form of a free ride on the investment of the plaintiff. L’Oreal was unsuccessful in establishing confusion among customers. It was however successful in establishing that it had suffered an infringement under the trade Marks Directive, articles 5(1)a and (2) on the premise of double identity and free riding.
In the case of Scenting Ltd, under the precedent set out in the L’Oreal v Bellure, it is definitely a case of trade mark infringement under articles 5(1)a and (2) of the trade Marks Directive. The use of comparison which gives the impression of equivalence and the express usage of the names of Naissance which is produced by Chic SARL is a case of free riding in which Scenting Ltd made commercial advantage from the use of an established trade mark (Mercer, John 2010).
According to articles 5(1)a and (2) of the trade Marks Directive, there can be confusion by association. A situation where the public makes confusion about the sign and the mark in question is one of the grounds under the articles in which confusion can be proved. In the case of Scenting Ltd, this cannot be used since there is no usage of brand marks (Mercer, John 2010).
Under the same articles, there is a provision for the enhanced protection of trademarks with reputation. Under article 5(2), there is a provision for states of the European Union to provide extended protection for trademarks that have a reputation where the use of a sign takes an unfair advantage or is detrimental to the character of the trademark. Under this provision, the use by scenting Ltd of the equivalence of the trademarks of another company will be considered as infringement of the trademarks of another company. Defending the actions of Scenting Ltd will be in vain since if this provision id followed, then Scenting Ltd will be found to have infringed on the trademark of another company which enjoys a higher reputation in the market, which in itself an act of free riding (Mercer, John 2010).
Under the provisions of the directive, it is assumed that the trademark which is infringed on has been known by a certain percentage of the public. According to the provisions, though it cannot be concluded that the trademark must have been known by a given percentage of the relevant public, a degree of a certain level of knowledge is required and must be reached when an earlier mark is recognized by a significant part of the public. Under this provision of the articles, the products that Scenting Ltd made comparisons with are considered to have a reputation since even the company itself, by making comparisons of equivalence, admit that they enjoy a higher level of public recognisance and thus have a reputation. According to this provision, Scenting Ltd is guilty of trademark infringement (Mercer, John 2010).
Furthermore, it should be noted that Articles 6 and 7 of the Law on Control of Directive Limiting the right of the holder of a mark under Article 5, to prohibit third parties from using the mark. In this regard, among other things, provides that paragraph 6 of the trademark owner can prevent third parties from using the mark, which is important to show the intended purpose of the product, use it provides in accordance with honest practices in industrial or commercial matters. Article 7 provides that the owner is not entitled to prohibit the use of the mark in relation to goods which have been put on the market in the Community under that trade mark owner or with its consent, unless there is a valid reason for appeal to most commercial products (Mercer, John 2010).
Relying on the arguments before the Court, it should be stressed that define marked as belonging to one or other specific provisions of Article 5, if not necessarily a criterion for evaluation as to whether the application in question is valid. The directive and Article 6, Article 12 give control provisions to limit the effects of the registration of the mark. These provisions relate to use in accordance with honest practices in the name of (a) a third party or address, (b) data display, and (c) for the purposes specified symptoms of goods or services, in particular as accessories or parts (Mercer, John 2010).
After consideration of the provisions of the article and the precedent set out by the L’Oreal v Bellure, Scenting Ltd has very little chance of success in the defence of its marketing. As such, I would advise the company to try and settle the matter in an out of court situation. I would also advise the company to seek other methods of dealing with marketing its products to ensure that it does not make an infringement of the trademarks of established products (Mercer, John 2010).
Another way of defending the case would be trying to prove to the court that the Naissance perfume does not qualify as a brand of reputation. If Scenting limited convinces the court that a considerable percentage of the relevant public does not have knowledge of the existence of the perfume, it can argue that its actions do not actually infringe on the trademark rights of the plaintiff company. This is a way through which Scenting Ltd can defend itself from the accusation of trademark infringement (Mercer, John 2010).
b)
Legality of the name Desir
The registration of the name Desir will have to be carried out through the United Kingdom intellectual Property Office. The exclusive rights attributable to a trade mark can only be attributable to the name “desir” if and when the intellectual Property Office accepts the registration. The rights will allow Scenting Ltd to prevent any unauthorised use of the trademark on other products from other companies which may develop trademarks which may be similar (Mercer, John 2010).
Before registration, a name search will be conducted to ensure that desir is not a trademark which is owned by another company either in the United Kingdom or in other European countries. This will ensure that any trademark conflicts which may occur in the future as a result of similarity in trademarks (Mercer, John 2010).
According to the trademark law in England, before a name is registered as a trademark, it should have a level of distinctiveness. This means that for the name Desir to be registerable it should not posses any similarity to another product name under the jurisdiction of the European Court of justice. As such, the name search will indicate on whether the distinctiveness of the name can be assured and whether the name is associated with a product similar to the one that Scenting wishes to use it on (Mercer, John 2010).
There is a provision in law that a trademark shall not be registered if it is identical with an earlier protected trademark or the goods or services for which an application is being made. In light of this, scenting Ltd will have to make a search and ensure that there are no perfumes of fragrances which have been registered under the same name. This will ensure that there is full compliance with this provision of the law (Mercer, John 2010).
A search for the name Desir on the European database reveals a number of other trademarks which bear the name Desir. Though Desir as single word is not used, there exists other multi-worded trademarks which bear desir as part of their names. The implication of this is twofold. The fact that those trademarks do not bear the exact name of desir means that it is possible that the company can go ahead and make a registration of the name. This is under the assumption that the other registered names do not represent products which are similar to the one that Scenting Ltd wishes to use the name for. This implies that a further investigation needs to be conducted on each of names that are already registered to establish that none of them are actually registered for a similar product (Mercer, John 2010).
Another perspective that the multiple registrations that occur for the name desir may be an indication that scenting Ltd needs to look for another name for its product. This may be the most logical way of dealing with the occurrence of the names since such a move would ensure that the company avoids copyright infringement (Mercer, John 2010).
In conclusion, based on the name search, it would be illegal to use the name desir. This is because it has already been registered earlier by other parties. If avenues exist for its registration, they should be avoided since they give the company an opening through which it can be legally challenged for the use of the name (Mercer, John 2010).
The smell of “Desir” which may be described as “spice with a touch of citrus lemon” is not registrable with this or any other description. The registration of olfactory trademarks has not been completely enshrined in the law and its registration is based on precedents which do not give an allowance for the registration of smells (Mercer, John 2010).
The famous manufacturer Channel sought to register in 1994 a fragrance of “Channel 5” as an olfactory trademark and gave it a description similar to the one given by scenting to its product. This application failed on the argument that the shape of a product should not result from the nature of the product itself. Under this precedent, the trademark as envisioned by Scenting Ltd cannot be registered (Mercer, John 2010).
A similar application was lodged by Sumitomo rubber Company in an attempt to register a fragrance to be applied to tyres. This request for registration of an olfactory trademark was successful and holds the record as the first such registration of an olfactory trademark.
Based on the provisions of these two precedents, it is not possible to register the product of scenting Ltd using the description given because it does not graphically represent it in a means of art. The product gives itself a description based on natural olfactory characteristics (Mercer, John 2010).
As indicated, it is not legal to register the fragrance under the description given by the company. This is mainly informed by the fact that the registration is meant for a commercial product using a description that relies on natural products which cannot be registered as trademarks (Mercer, John 2010).
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, "A Mark of Distinction: Branding and Trade Mark Law in the UK from the 1860s", Business History (2010).
