L’Oreal SA v Bellure NV 2006, EWHC 2355
Citation: L’Oreal SA v Bellure NV 2006, EWHC 2355
Rule of thumb: Where a trade mark application of a large company builds upon a trade mark lodged by a far smaller organisation from the past, can the smaller organisation sue the bigger organisation & prevent them from using it? As a general rule, no – a smaller organisation copying the trade mark of a large organisation is a very different scenario from this.
Judgment:
Even if words look on paper to be clearly different from one already registered, sometimes customers in practice can still be confused and in this circumstance the new brand cannot be allowed to use this. The facts of this case were that Revlon had registered the word ‘flex’ for hair products. L’Oreal sought to register the word ‘flexi air’ as a trade mark and Revlon opposed this. L’Oreal argued that the word flex was not distinctive meaning that they were allowed to use it. The Court held that the word was not distinctive but it was of weak distinction – it was known in society but not used by many people. The Court held that where there is a word of weak distinction, and it is being used for an extremely similar product, then this can be deemed to be a infringement or be grounds for refusal as it could confuse the average consumer.
Ratio-decidendi:
‘The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question... consumers would believe that the slight difference between the signs reflected a variation in the nature of the product and stemmed from marketing consideration ... not different denoted goods from different traders’, para 111. Where it can be demonstrated that a new trade mark of a smaller organisation unfairly denotes connections in the mind with the trade mark of a more established brand then this is grounds for having the smaller organisation be forced to stop using this, ‘... the concept of taking unfair advantage of the distinctive character or repute of the trade mark, also referred to as parasitism and free riding, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign... the characteristics which it projects to the goods... there is clear exploitation on the coat-tails of the mark with the reputation...’
‘... the... trademark ... is... the intangible sum of a product’s attributes: its name, packaging, and price, its history, its reputation, and the way it’s advertised’, paragraph 79.
Warning: This is not professional legal advice. This is not professional legal education advice. Please obtain professional guidance before embarking on any legal course of action. This is just an interpretation of a Judgment by persons of legal insight & varying levels of legal specialism, experience & expertise. Please read the Judgment yourself and form your own interpretation of it with professional assistance.