The works in question
Scenting Ltd sells perfumes and toiletries for both men and women which smell like other expensive brands. The company’s products bear writing on them indicating that they “smell like” an expensive brand. For example one of their products, “Dawn” smells like “Naissance” which is produced by a French company called Chic SARL. “Dawn’s” packaging has words indicating that the company’s testers differentiate between “Dawn” and “Naissance”. When the Chic SARL Company moves to court on copyright infringement grounds, Scenting Ltd maintains that there is no copyright infringement. This is a summary of the binding laws, similar cases and recommendations.
In summary, article 5(2) of the First Directive 89/104 of European Union Law approximating member state laws regarding trade marks is interpreted to mean that the act of taking unfair advantage of distinctive qualities or a mark’s repute, within the provision’s meaning, does not require the existence of a probability of confusion or detriment to that distinctive quality or the mark’s repute or even to its proprietor (Peloso, 2003; Bently & Sherman, 2001). Any advantage to a third party that arises from usage of a sign comparable to a mark which has a reputation will be interpreted as an advantage acquired unfairly by the said third party. The third party is seen as having taken advantage that distinctive character or the mark’s repute with the intention of benefiting from the ability to attract, the prestige as well as the reputation of that mark, exploiting these advantages without any financial consideration. Additionally, the third party is seen as taking advantage, without fairness, of the marketing effort that the mark’s proprietor has already expended for the creation and maintenance of the mark’s image (Peloso, 2003).
Article 5(1)(a) of the First Directive 89/104 is interpreted to mean that a registered trade mark’s proprietor has a right to prevent actions by a third party involving a comparative advertisement which falls short of all the stipulations of article 3a(1) Of the Directive 84/450 regarding the act of comparative advertising and misleading as in the Directive 97/55 amendment. This amendment permits comparative advertising of signs that are identical with a mark regarding goods and services identical to those of a registered mark even where the use can not jeopardize essential functions of that mark (Peloso, 2003).
Article 5(1) of the Directive 89/104 begins by stating that the registered trademark gives the proprietor access to exclusive rights therein. Those exclusive rights give the proprietor power to prevent any third party who does not have permission from him from using, for trade, any sign identical to the trade mark for products identical which the registration of the trade mark has been done.
Under Article 5(1)(a),Directive 89/104, the exclusive right is accorded to enable the trade mark proprietor to protect specific interests. This involves ensuring that the trade mark fulfills its functions .Exercise of that right should be reserved for cases where a third party’s use of a sign affects or might affect the trade mark’s functions. These functions include the trade mark’s essential functions which are to guarantee consumers that goods or services are from the legitimate origin. This means that consumers who recognize the trade mark on a good or service believe that that good or service originate from a company that they know and that is identifiable through that trade mark (Bainbridge, 2002).
Article 3a(1) of the Directive 84/450 concerns comparative advertising and misleading. It is amended by the Directive 97/55 and is interpreted to mean that the advertiser is seen as having presented products as replicas or imitations if he states in comparative advertising, either implicitly or explicitly, that the product he is marketing is an imitation of a good or service that has a well-known trademark. This is within the meaning given in Article 3a(1)(h) (Bainbridge, 2002).
The key object indicated in Article 3a(1)(h) of the Directive 84/450 is to stop an advertiser from claiming in comparative advertising that his marketed product or service constitutes a replica or an imitation of a product or service covered by a well known trademark. Consequently, it is not advertisements only that can explicitly evoke claims of reproduction or imitation which have been prohibited. Any advertisement which taking account of its overall economic context and presentation may implicitly communicate an idea of reproduction or imitation to the public is also prohibited.
Therefore, it is irrelevant whether the said advertisement indicates that the product has imitated the product which has a protected trademark in a wholesome sense or merely imitated an essential property of that product (Eur-Lex.europa.eu., n.d.).
Directive 84/450 stipulates that comparative advantage which fronts the products of the advertiser as an imitation or reproduction of a product which bears a trademark does not conform to fair competition and id therefore unlawful. Any advantage acquired by the advertiser as a result of such advertising is achieved through unfair competition. It must be taken as having taken unfair advantage of that mark’s repute as stipulated in Article 3(1)(g) of that particular directive.
Similar case and interpretation of ruling
The case of Scenting Ltd v Chic SARL can be compared to that of L’Oreal v Bellure (2010) in which Lord Justice Jacob relayed the verdict that the comparisons Bellure had used to market “smell-alike” perfumes had made an infringement on registered trade marks belonging to L’Oreal. Jacob LJ was compelled by an earlier decision by the ECJ on 18th July 2009 even though he strongly disapproved of the ECJ decision. He felt that the decision had a negative effect on free and fair speech and the freedom to trade. According to Iprights.com. (n.d.), His reasoning can be used to prepare the Scenting Ltd case and was basically as follows:
- Bellure’s sold perfumes that were lawful; even though the perfumes had been designed deliberately to imitate the scents of L’Oreal’s perfumes did not in any way infringe on intellectual property rights belonging to L’Oreal.
- The decision by the ECJ prevented Bellure from telling the truth to customers regarding its lawfully sold perfumes. This truth is that Bellure’s perfumes smelt like those of L’Oreal.
- That even though Bellure and L’Oreal were not in competition, the decision by the ECJ had the potential of restricting competition in an important area of trade. An example is generic dealers in print cartridge replacements and drug manufacturers who have to let their customers know which branded products their products can be equated to.
Additionally, Scenting Ltd should consider the defenses available against Infringement Action. Directive 2008/95 of Article 6 stipulates that a trademark is limited in the following.
- The trademark must not accord the proprietor the right to prohibit the third party from the use of: (a) his name or address; (b) Any indications of the geographical origin, value, time of the product is produced or service rendered, quality or quantity or any other characteristic of the product or service; (c) The trademark (in cases where it is necessary) to show the product’s intended purpose such as in spare parts or accessories. This is on condition that honest practices in commercial or industrial matters are upheld.
- The trademark must not accord the proprietor the right to stop the third party from the use, while trading, of an earlier right. This, however, is only applicable in a locality where that right is recognized by the governing laws of the state in question (s11 1994 Act).
In this regard, Scenting Ltd. should use the above in their defense against the trademark infringement claims.
Scenting Ltd. should attempt to prove that the words “Not Naissance” are very different from the words “Smells like Naissance”. Their case should also argue out that the words “Not Naissance but our testers couldn’t tell the difference are merely informative and do not give “Dawn” any unfair advantage. Scenting Ltd. should also try to prove that the scent of “Dawn” was not intended to be like that of “Naissance”. Scenting Ltd. Must show that this case cannot be covered by Article 3a(1)(h) of the Directive 84/450 because the words “Not Naissance” refute any preconceived ideas by the public about the imitative properties of the perfume “Dawn”
Summary of the works in question.
Scenting Ltd has produced a unique and high quality perfume with a proposed name “Desir”. The questions are whether “Desir” can be used legally as the product name and whether “Desir’s” scent which has been described as “spice with a touch of citrus lemon” can be registered with this or any other description.
A search conducted on the Trade Marks database at http://www.ipo.gov.uk/tm/t-find/t-find-text/ indicates that the name Desir appears severally on product names. However, the most notable of the results is a product with the registered trademark “Pur Desir De”. This trademark covers a list of class 3 products such as deodorants; perfumes; perfume oils and scents; cosmetics; scented candles; incense; room fragrances etc. The database does not indicate any product with the description “spice with a touch of citrus lemon”.
The name “Desir” has already been registered by a company that sells the same group of products as Scenting Ltd. this name, therefore, is not registrable as a trademark that belongs to Scenting Ltd.
Article 2 of the directive 89/104 can be applied in the context of the Scenting Ltd. Article 2 of the directive 89/104 is interpreted to mean that a trademark may include a sign which, in itself, is not perceivable visually on condition that it is possible to represent it graphically by either lines, characters or images. The representation format must be precise, clear, easily accessible, intelligible, self-contained, durable and objective (Hettinger, 2010). For an olfactory sign, a chemical formula; written description; deposit of sample of odour or a combination of the above does not satisfy graphic representability requirements.
Similar case: Sieckmann vs Deutchess patent and Marketing (2002)
In Sieckmann V Deutches, Mr Sieckmann filed for registration of a trademark to cover various services. According to Sherman & Bently (1999), he attempted to represent his application graphically as follows:
- A description of the smell through words
- A chemical formula
- A physical sample bearing the scent
- Information regarding where samples of that scent could be found.
The European Court of Justice declared that Article 2 must include trademarks which must be representable graphically as lines, characters or images. The representation must also be precise, clear, easily-accessible, durable, intelligible, self-contained, durable and objective. The methods used by Mr. Sieckmann did not satisfy the requirement for graphic representation (Intellectual Property Office., n.d.).
In the context of Scenting Ltd and its product “Desir”, using the phrase “spice with a touch of citrus lemon” is allowed legally. This is because the written description does not satisfy the requirements for graphic representation as stipulated in Article 2 of the directive 89/104. The sentence “spice with a touch of citrus lemon” is registrable because they represent an attempt to describe an olfactory property of the product “Desir”.
Regarding the name “Desir”, the product is not registrable because it uses a mark that has been registered in similar goods. For example, no one else other than Apple Computers Inc may use “apple” as a means of identifying themselves. Scenting Ltd. can not, therefore, use register the name “Desir” because it has already been registered as “Pour Desir De” by another company selling the same group of products as those of Scenting Ltd.
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Bainbridge, D. I. (2002). Intellectual property (5th ed.). Harlow, England: Longman.
EUR-Lex.europa.eu. (n.d.). EUR-Lex - 62007CJ0487 - EN. EUR-Lex â Access to European Union law â choose your language. Retrieved April 3, 2013, from
Hettinger, E. C. (2010). Justifying Intellectual Property. Cheltenham [etc.: Edward Elgar.
Intellectual Property Office. (n.d.). Intellectual Property Office - By number results. Intellectual Property Office - Welcome to the Intellectual Property Office. Retrieved April 3, 2013, from http://www.ipo.gov.uk/tmcase/Results/4/EU002421196
Iprights.com. (n.d.). Alert 362 - EU - L'Oréal v Bellure. A travesty of justice, or a breakdown in communication. Rouse - Home. Retrieved April 3, 2013, from http://www.iprights.com/content.output/944/944/Resources/Alerts/Alert%20362%20-%20EU%20-%20L%27Or%C3%A9al%20v%20Bellure.%20%20A%20travesty%20of%20justice,%20or%20a%20breakdown%20in%20communication%20.mspx
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Peloso, J. (2003). Intellectual property. Bronx, N.Y.: H.W. Wilson Co.