In a ground breaking decision in June the courts held that if goods are packaged like other goods then, even if no consumers are confused into thinking the goods are those of the rival company, a claim for breach of trademarks can be made. L’Oréal found its packaging was copied and took the sellers to court.

Many companies in Europe will now have to reassess their packaging. Go into any supermarket and you will see famous brand products and the “look-a-likes” which mimic the style or brand and colours of the famous products. Until now many of them have got away with this as it did not come close enough to amount to passing off or breach of trademark. Now the European Court of Justice has held that this type of copying does breach EU trademarks law. They said it amounted to taking “unfair advantage” of the other brand that is illegal under the EU trademarks directive. In this case perfumes made by competitor Bellure and sold by Malaika Investments and Starion International were too close to L’Oréal’s packaging.

As well as copying packaging the defendants had issued a list of their perfumes that showed which products of L’Oréal’s theirs smelled most like. This was also found to breach the rules on comparative advertising and trademarks.

The court said “Where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige… the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or
the repute of that mark…. The taking of unfair advantage… does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor.”

Many companies are now re-evaluating their litigation strategies and considering how their products are packaged and sold in the light of this ruling. 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 office in West Yorkshire.

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