If you make products and issue a list which shows which famous brand product they are similar to does that break the law? Yes, the Court of Justice of the EU has said. In a recent case the UK court had to apply this law.

We do a lot of intellectual property law and advice and this case is a major IP case of interest to many. L’Oréal v Bellure [2010] EWCA Civ 535, was about the sale of a range of products which were produced by Bellure and then described as like particular L’Oréal perfumes. No one was confused into thinking they were L’Oréal perfumes so the issue was whether Bellure breached L’Oréal’s trade mark. The EU has held that this allowed Bellure to take unfair advantage of L’Oréal’s trade mark even if L’Oréal suffers no damage.

The Judge in the UK said it was with regret he was forced to follow the EU ruling, but follow it he must. The judge said “Does trade mark law prevent the defendants from telling the
truth? Even though their perfumes are lawful and smell like the corresponding famous brands, does trade mark law nonetheless muzzle the defendants so that they cannot say so? I have come to the conclusion that the ECJ’s ruling is that the defendants are indeed muzzled… My own strong predilection, free from the opinion of the ECJ, would be to hold that trade mark law did not prevent traders from making honest statements about their products where those products are themselves lawful.”

In practice the decision could have an impact on those producing look-alike brands for supermarkets and others and means that businesses need to be particularly careful if they refer in any way to brands of others. There are laws on comparative advertising which still apply and do allow comparisons but it is wise to take legal advice.

If you either have concerns about the products you sell or believe you may now have stronger grounds to stop a competitor copying your products please contact us for advice by calling Cathy Cook at Jordans Solicitors in Wakefield.

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