UK: Court Of Appeal Narrows Protection From Lookalikes (And Smell-Alikes)

The Court of Appeal recently gave two very important decisions on trade marks and designs, the first on the interaction between the Trade Mark Directive ("TMD") and the Comparative Advertising Directive ("CAD"), the second a landmark judgment significantly narrowing the scope of protection for Community Designs.

In L’Oréal SA & Ors v Bellure NV & Ors the Court of Appeal considered the use of a competitor’s trade marks on comparative price lists and whether such use would interfere with the essential function where the marks were used to designate the characteristics (in this case the smell) of the competitor’s goods. In commenting on the issues, Jacob LJ gave a clear indication that he considers European trade mark law should resist becoming overprotective as "neither the image nor the essential function of the trade marks for the originals is adversely affected by the lists". The Court of Appeal also took the opportunity to roundly reject any notion of extending the law of passing off to include broader concepts of unfair competition.

A summary of the questions referred to the ECJ is set out below:

1. Whether use of a mark for comparative advertising purposes can infringe a trade mark under the TMD if it does not impair the essential function of the mark;
2. Whether the use of a trade mark in comparison lists to indicate the characteristics of a competitor’s product would constitute trade mark infringement under the TMD;
3. What is meant by unfair advantage in the CAD and whether use of a mark in price comparison lists would accordingly be unfair;
4. What is meant by presenting goods or services as imitations or replicas in the CAD; and
5. What might amount to taking unfair advantage of a trade mark with a reputation under the TMD.

For full commentary and analysis on L’Oréal SA & Ors v Bellure NV & Ors, click here.

In Procter & Gamble Company v Reckitt Benckiser (UK) Limited the Court of Appeal overturned Mr Justice Lewison’s High Court decision of December 2006 that a spray bottle used by Reckitt Benckiser for marketing its "Air Wick Odour Stop" product infringed Procter & Gamble’s registration for a spray bottle, used by P&G to market "Febreze". This decision changes the test for infringement, which is now a different test from that for validity. It also provides further guidance on the comparison to be made between the two registered designs and the allegedly infringing article. Owners of registered Community designs should note that this decision significantly narrows the scope of protection conferred by their registrations.

For full commentary and analysis on Procter & Gamble Company v Reckitt Benckiser (UK) Limited click here.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

The original publication date for this article was 16/10/2007.