Legal status of “smell-alike perfumes”
The sale of perfumes that imitate or try to reproduce the scent of brand name perfumes is not a new phenomenon although it has grown exponentially over the last few years, influenced by the economic climate and the increase in low-cost products and services in all areas.
Consumers are made aware of this “likeness” through promotional materials and the use of similar names and packaging, and by brand browsers. More or less sophisticated equivalence tables are also used, listing the registered brands alongside a reference number that corresponds to the supposedly similar fragrance.
The issue here is not the appropriateness of selling perfumes which are more or less similar to others, but rather, the use being made of third-party trademarks to promote and sell own products, which in our view is clearly unlawful.
We look briefly below at the legal status of so-called “smell-alike perfumes” and the latest judgments handed down in this regard.
One of the first court decisions on the subject was issued in 2002. In judgment 7/2002 of January 8, 2002, in the lawsuit against Perfumes y Cosméticos Yodeyma, S.L., in which Garrigues acted for the plaintiffs, the Toledo Provincial Appellate Court deemed the defendant’s conduct to constitute unfair competition and parasitic advertising.
The Court of Justice of the European Union (CJEU) has also ruled on this matter. In its judgment of June 18, 2009, the CJEU held that “The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party where that party seeks by that use 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, without paying any financial compensation, the marketing effort expended by the proprietor of the mark.”
More recently, Community Trademark Court no. 1, in its judgment of January 28, 2014— confirmed in its entirety by the decision handed down on June 13, 2014 by the Alicante Provincial Appellate Court—held that the plaintiffs’ exclusive rights enshrined in article 9.1 of the Community Trademark Regulation (and the corresponding article 34.2 of the Trademarks Law) had been infringed since the case constituted an instance of “free-riding”. The court ruled that the public associated the plaintiffs’ brands and the smell-alike perfumes and that the advertising material of the plaintiffs’ trademarks had been used, meaning that unfair advantage had been taken of the reputation of the plaintiffs’ trademarks, a conduct which was classed by the judgment as “parasitic” and contrary to honest practices in the market. Moreover, the idea of imitating original perfumes is contrary to fair competition and the advantage obtained through this advertising is therefore unlawful.
It is clear that case law is cementing the view that this conduct is contrary to trademark rights, and litigation in this area is likely to increase, since trademark holders are acting forcefully and categorically against this phenomenon which infringes their industrial property rights with its “parasitic” business model.
Matters such as this are addressed by our Intellectual Property specialists in their periodic newsletters on legal issues relating to the fashion, luxury goods and design sectors which are available on our website.
Garrigues Intellectual Property Department
