Smells good, looks good – but is it a trade mark?

Citation

Howarth, M. (2007), "Smells good, looks good – but is it a trade mark?", Strategic Direction, Vol. 23 No. 2. https://doi.org/10.1108/sd.2007.05623baa.002

Smells good, looks good – but is it a trade mark?

Matthew Howarth is Head of Intellectual Property at the Bradford and Leeds-based law firm Gordons.

Some businesses will go to extreme lengths to protect their brands even when it involves something as seemingly intangible as a smell or a color.

But this is perfectly understandable if, like cosmetics giant L’Oreal, you generate substantial revenues from perfume or, like global energy company BP, you want to ensure the integrity of your corporate identity throughout the world.

To clarify, a trade mark is any distinctive sign or symbol that distinguishes one business’s goods or services from another and allows customers to easily recognize such a distinction. This means that businesses can register a name, logo, slogan, domain name, shape and even a color.

The law governing trade marks allowed L’Oreal to win a case in the High Court against “smell alike” brands that were being imported into the UK. The cosmetics company successfully argued that importers of perfumes such as the intriguingly named “La Valeuer” and “Pink Wonder” infringed its registered trade marks even in cases where there was no evidence of confusion or likelihood of confusion.

UK trade mark law protects registered trade marks when look-alike marks are being used. Usually when the marks being used are not identical to the registered trade marks it is necessary to demonstrate to the court that there is a risk of members of the public being confused into thinking that the look-alike brand is connected to the product bearing the registered trade mark.

However, there are circumstances where even though there is no evidence of such confusion the court will still find that the registered trade mark has been infringed. To succeed in this type of claim it is necessary to show that the use of the offending mark is similar to the registered trade mark and such use takes unfair advantage of the distinctive nature of the registered mark or its reputation.

In this case L’Oreal was able to demonstrate to the court that a similar mark was being used to their registered trade marks and that such use took unfair advantage of the reputation of their registered marks. The case is one of the first cases in this country that has held that there was an act of infringement when there is no evidence of confusion amongst the members of the public.

The court found on the facts before it that the La Valeur box and the Pink Wonder bottle were similar to the registered trade marks owned by L’Oreal and in particular its products “Tresor” and “Miracle” such that the average consumer would associate the infringing smell-alike products to the L’Oreal products.

The Judge held that by taking elements of the Tresor and Miracle packaging there was a link that would be made with these leading products that would affect the purchasing behavior of the public and that this would be enough to find infringement.

He also held that where a deliberate attempt had been made to benefit from the marketing and branding activities of L’Oreal this would amount to taking unfair advantage of the registered trade marks. The case is a reminder of how look-alike branding needs to be very careful not to get too close to the brand that it seeks to compete against.

It is clear that the courts will not allow “free riding” on the reputation of registered trade marks even if there is no actual or likely confusion amongst the public. In days when marketing and branding expenditure is significant and the proliferation of look-alike brands is common, competitors need to be alive to this risk.

With regard to BP, it was recently involved in a case which arose out of the company’s application to trade mark the particular shade of green used in its corporate identity or logo. The Australian High Court refused BP’s application.

BP had used green extensively for many years but only in conjunction with yellow. BP’s application failed on the basis that the court considered the green was only distinctive to BP when it was accompanied by yellow. The color green on its own had not acquired sufficient distinctiveness in its own right.

While the decision itself is not binding in English law, the approach adopted by the court will assist intellectual property professionals in the UK in dealing with applications for what can be termed “color marks”.

Even though it is permissible for a business to register a color on its own as a trade mark, commonly a color is registered as being part of a logo or company insignia. There are, however, occasions in which a trade mark does consist solely of a color. A good example is mobile phone company Orange which has registered the color orange as a trade mark for telecommunication products and services.

It is certainly more difficult to bring a successful application for registration of a trade mark which consists solely of a color. Applicants often find it hard to prove that the mark is distinctive particularly when the color or particular shade is a common one.

Gordons regularly advises on branding and trade mark issues. If you require any further information or advice please contact Matthew Howarth on 0113 227 0100.

Acknowledgements

Issued on behalf of Gordons LLP by Osmosis. For further information contact Rob Smith on 07840 677534 or e-mail rob@osmosis.co.uk