The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The claimant’s expert survey evidence was defective in several ways, but even so there was no evidence of confusion under the claim in passing off. Mere similarities between shapes of the bottles cannot amount to infringement The court considered the effect of a disclaimer within the registration: ‘The effect of a disclaimer is that the trade mark owner recognises that that which is disclaimed is not in itself distinctive of the origin of the goods or services in question. Accordingly, there will be no infringement of the trade mark where the only similarity between the mark and the sign consists of a similarity to those features that have been disclaimed. ‘
The correct comparison is a contextual comparison between the mark and the sign, having first identified both the mark and the sign. In that context the alleged infringements were not proven
Judges:
Lewison J
Citations:
[2006] EWHC 2355 (Ch), [2007] ETMR 1
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – O2 Holdings Ltd. and Another v Hutchison 3G Ltd (No 2) ChD 23-Mar-2006
. .
Cited – Devinlec Developpement Innovation Leclerc SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) ECJ 12-Jan-2006
ECJ Community trade mark – Figurative mark containing the verbal element ‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion – . .
Cited – Parfums Christian Dior v Evora BV ECJ 4-Nov-1997
ECJ As a court common to more than one Member State which has the task of ensuring that the legal rules common to the three Benelux States are applied uniformly and reference to which is a step in the proceedings . .
Cited – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 19-Dec-2002
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. . .
Cited – Societe Des Produits Nestle Sa v Mars UK Limited CA 26-Jul-2004
The appellant had sought to register as a trade mark the shape of a polo mint. The objector said it lacked sufficient distinctive character. The appellant sought to amend the specification of the trade mark to limit its application as to the goods . .
Cited – Arsenal Football Club Plc v Reed CA 21-May-2003
The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Cited – Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer ECJ 29-Sep-1998
In a complaint of trade mark infringement, and when comparing the mark and sign, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services and vice versa.
Adidas-Salomon AG and Another v Fitnessworld Training Ltd ECJ 23-Oct-2003
The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect . .
Cited – Lloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
Cited – General Motors Corporation v Yplon SA ECJ 14-Sep-1999
Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for . .
Cited – Mango Sport System Srl Socio Unico Mangone Antonio Vincenzo v Diknak OHIM 2005
(First Board of Appeal of OHIM) The Board held the registration of the trade mark ‘Mango’ for crash helmets potentially to take unfair advantage of the registered mark ‘Mango’ in relation to ladies clothing aimed at fashionable young women. The . .
Cited – Marca Mode CV v Adidas AG ECJ 22-Jun-2000
The reputation of a trade mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.
Europa Article 5(1)(b) of First Directive . .
See Also – L’Oreal Sa and others v Bellure Nv and others ChD 24-May-2006
Action for trade mark infringement and passing off – suggestion that goods of such superior quality that no possibility of confusion. . .
Cited by:
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Appeal from – L’Oreal Sa and others v Bellure Nv and others CA 10-Oct-2007
. .
At first instance – L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoires Garnier and Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd ECJ 18-Jun-2009
loreal_bellureECJ2009
ECJ Approximation of laws – Trade marks Directive 98/104/EEC Article 5(1)(a) – Use of another person’s trade mark for identical goods in comparative advertising Article 5(2) – Unfair advantage taken of the . .
See Also – L’Oreal Sa and Others v Bellure Nv and Others CA 21-May-2010
The claimant, manufacturers of perfumes, complained that the defendants, manufacturers of smell-alike products, were in breach of the Directive in marketing their products using lists which identified those of the claimants products to which they . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 30 June 2022; Ref: scu.245192
