Unfair Advantage and Detriment in Trade Mark Infringement: Register Your Shape Marks

This article was included in our Winter 2009/10 edition of Inside IP.

Trade mark infringement generally occurs where a mark identical or similar to that registered is used in relation to goods or services identical or similar to those

covered by the registration.  However, there is a more unusual form of infringement that can take place even where the respective goods or services are quite different.  This type of infringement happens where an identical or similar mark is used in a way which takes “unfair advantage” of or is “detrimental” to the distinctive character or reputation of the registered mark.  The registered mark must also have a “reputation” in order to be infringed in this way.

There are many questions about quite when this type of infringement can happen.  What, for example, is “unfair advantage”?  Over the past year, there have been two major cases in which the European Court of Justice (“ECJ”) has shed some light on this.  The first one was a case concerning cheap imitations of expensive perfumes and the second concerned use of a mark containing the well known INTEL mark.

L’Oréal SA -v- Bellure NV (C-487/07), 18 June 2009, ECJ

In this case, Bellure sold imitation “smell-a-like” perfumes.  In some cases, the packaging and bottles were similar to the “real” perfume and Bellure also produced a comparison list which showed which of its perfumes were meant to smell like which of L’Oréal’s perfumes.  L’Oréal claimed that this infringed its registered trade marks, both of the word marks for the relevant perfume (Tresor, Miracle, Anais-Anais and Noa Noa) and of the bottle shape together with the relevant word.  It also claimed that it contravened comparative advertising laws.

The ECJ appeared to find that, in this particular case, use of the similar bottles did infringe L’Oréal’s registrations, as such use gave Bellure an advantage and that advantage was unfair.  It was unfair because Bellure, by using the similar shapes, sought to “ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark” and to exploit the marketing effort expended by L’Oréal in creating and maintaining the mark’s image.  This was despite the fact that the parties agreed that there was no likelihood of “confusion” between the marks; i.e. of consumers actually thinking Bellure’s perfumes were L’Oréal’s.

The use of L’Oréal’s marks in the comparison lists contravened comparative advertising laws in that the lists presented Bellure’s products as an imitation of L’Oréal’s.  That therefore meant that there was also likely to be trade mark infringement as any advantage gained through use of the lists must be “unfair”.

This case is being seen as giving power to owners of known marks to prevent others trading off their reputations.  How broadly it will be applied and interpreted remains, however, to be seen.

Intel -v- CPM (C-252/07), 27 November 2008, ECJ

This case concerned an action to invalidate a trade mark registration, rather than an action complaining about use of any mark.  However, the grounds on which a registration can be invalidated mirror those on which use can be objected to.

Intel owns a number of UK and CTM registrations including the word INTEL for computers and computer associated products.  It applied to invalidate a registration of the mark INTELMARK despite the fact that that mark was registered for services rather different to those covered by its own registrations.  It therefore turned to the less usual ground on which registrations can be objected to and claimed that use of the mark

INTELMARK would be detrimental to the reputation of their mark INTEL.

The ECJ held that there would be “detriment” if evidence showed that use of the mark INTELMARK caused “a change in the economic behaviour of the average consumer… or a serious likelihood that such a change will occur”.  Quite how such evidence is to be found remains to be seen and it is likely that the ECJ has put up quite a high hurdle for trade mark owners to jump if they want to rely on an argument that use of a mark will cause “detriment” to their own.

Conclusions

Whilst there is still uncertainty surrounding the application of this less usual ground of trade mark infringement, we do now have some clarification.

Proving detriment may well be difficult to do but the circumstances in which “unfair advantage” can be argued are possibly greater than previously thought.  To make use of the infringement provision, however, a company must first have a registered trade mark.  Registering shape marks should be something businesses consider doing more frequently so as to enable them to take advantage of this infringement provision.

Edward Carstairs 05 Nov 2009

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