In recently published recommendations to the European Court of Justice, an advocate general suggested that Bellure did not break EU trade mark law when the company compared its perfumes to big name L'Oreal brands with slogans like "only your wallet smells the difference".
Oliver Herzfeld, the chief legal officer at brand licensing agency Beanstalk, told CosmeticsDesign.com: “L’Oreal has been flailing around trying to find the legal tools to protect its brands in the case.”
Different approach to non-conventional trademarks
The senior vice president of Beanstalk said L’Oreal may have enjoyed an easier ride in the US because the country is a step ahead of the EU in its approach to non-conventional trade marks.
While protection exists on both sides of the Atlantic for product names, bottle shape and packaging design, non-conventional trade marks related to scent, color and texture are now relatively common in the US but virtually unheard of the EU.
Herzfeld said that in the L’Oreal – Bellure case, being able to register the scents of the L’Oreal perfumes as trade marks would have made the task of protecting its brands easier.
The European Community Trademark Harmonization Directive sought to harmonize the definition of a trade mark in the EU but Herzfeld said it “remained silent on the issue of non-conventional trademarks”, stating in Article 2 that:
“A trademark may consist of any sign capable of being represented graphically ... provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
Benefits of greater trade mark protection
Herzfeld said acknowledgement of trade marks for aspects of products such as scent, color and texture provides both consumers and businesses with an added level of protection.
Companies can defend themselves from rivals looking to free-ride on the reputation of their brands and consumers can be more confident in the quality of the products they buy.