In 2007, L’Oreal sued Bellure and other look-alike perfume manufacturers for trade mark infringement. Lord Justice Jacob took the opinion that there must be harm of some sort to the trade mark owner for there to be an “unfair advantage”, however, it was accepted by all the parties that l’Oreal had not suffered any detriment, partly because both parties operate in different market tiers.

Lord Justice Jacobs asked the ECJ to clarify this point. On the 18 June 2009, the ECJ concluded that harm is not necessary for there to be an “unfair advantage” and it was sufficient to prove, in this case, that the defendant was “riding on the coattails” of l’Oreal’s established reputation and marketing effort.

The effect of this judgment is for l’Oreal to succeed in protecting their trade marks in a number of their perfumery products. However, some of the claims against the defendants will fail as the Court of Appeal did not consider there to be sufficient similarity (“link”) between all l’Oreal’s trade mark products and the relevant imitations.

In terms of the wider effects of this judgment, Lord Justice Jacobs would probably consider that EU trade mark law is becoming “over-protective” by intervening when there is no real harm. That being said, this approach harmonises the interpretation of “unfair advantage” in EU law and brings the UK in line with the consensus in Europe.

“The material bearing the trade marks was of such poor quality that no one could think that its trade origin was that of the trade mark owner.”  Accordingly, the use of the trade marks was not likely to jeopardise the guarantee of origin which constituted the essential function of the trademark rights owned by the trade mark owners.”

The court rejected his defence.  So, he asked the Court of Appeal to consider allowing his defence. It refused on the grounds that a defence based on the quality of the reproduction was not permissible.  The court said:

“In our judgment, it is impossible to read Parliament as having intended that, where there is straightforward counterfeiting of goods and their registered trademark, it is open to a defendant to advance a defence that the quality was so poor as not to give rise to any risk of confusion,”

“In the present case, it is not and could not seriously be suggested that the use of the EMI logo or other logos was anything other than a replication of those badges as signs of origin registered by the proprietors. It had no other rational purpose. Whether the reproductions were poor and whether they were actually likely to deceive is in our judgment neither [here] nor there,” said Lord Justice Toulson.

“The goods in this case did not involve the use of a trademark for a descriptive purpose but, as already stressed, was pure counterfeiting. It self evidently damages the registered proprietor of a trademark if that proprietor is not able to control the use of its logo as a badge of origin and if goods of variable quality bearing that stamp are on the market.”

The ruling of the Court “There is no foundation for this as a defence under the statute or in authority and, as already noted, it would reopen the door to people like the applicant selling their wares as genuine fakes. For those reasons we dismiss this renewed application,”

This case is to be distinguished from the House of Lords decision in a market trader, Robert Johnstone’s case that when he hand-wrote artists’ names on pirated CDs he was not using their trade marks.   The House of Lords accepted the trader was merely indicating the contents of the CD and not using the name as a badge of origin proving their provenance.

too dodgy to be goods?

In the recent case of R E G I N A v GARY BOULTER [2008] ( EWCA Crim, 2375, see the case details here ), a man convicted of criminal trade mark infringement for possessing counterfeit goods failed to have his conviction overturned by claiming that he could not have infringed a trade mark because his copy of it was so poor.