Protect your brand, because you're worth it

At last, there is some good news for brand owners in the uphill battle against copycat packaging. A recent ruling by the European Court of Justice (ECJ) may make it easier for brand owners to combat copycat packaging by enforcing their legal rights through the courts.

Copycat packaging is an escalating problem for brand owners in a market-place which is becoming increasingly brand-led.

In recent years, there has been a significant rise in packs designed to resemble that of major brands, particularly in supermarket own-brand packaging.

However, pursuing copycats through the courts is an expensive and often risky strategy, partly due to the hurdles which must be surmounted in order to establish the relevant legal rights.

In its recent ruling, made in L'Oréal's trademark infringement claim against Belgian perfume manufacturer Bellure, the ECJ has certainly made one of those hurdles look less challenging.

Bellure manufactured a range of perfumes which were expressly intended to imitate certain well-known L'Oréal perfumes. As part of the marketing for the imitation perfumes, Bellure's distributors published ‘comparison lists' which explained which L'Oréal perfumes Bellure's perfumes were designed to imitate.

L'Oréal claimed that Bellure had infringed its trademarks by referring to them in these lists, and by selling the imitation perfumes in bottles which were similar to L'Oréal's.

The Court of Appeal in the UK referred a number of legal issues to the ECJ for clarification. In its ruling, the ECJ took a strong line against Bellure's conduct in this case.

It ruled that there was no need for L'Oréal to prove there had been any detriment to its trademarks or likelihood of confusion as a result of Bellure's actions. Bellure had gained a commercial advantage by intentionally using packaging similar to L'Oréal's. The advantage it gained was ruled to be unfair and enough to constitute trade-mark infringement.

This ruling will serve as a warning to manufacturers using packaging which gains a commercial advantage from its similarity with a well-known brand. Packaging manufacturers and designers could also find themselves in the firing line. They need to ensure they obtain appropriate warranties and indemnities in their agreements with customers to protect their position.

The L'Oréal ruling came close on the coat tails of the Paris Court of Appeal's ruling in  May that Yoplait's Dizzy bottle too closely resembled that of Coca-Cola's Blak. Do these cases presage a turning of the (judicial) tide in favour of brand owners? Only time - and further rulings - will tell.

Francesca Fellowes is a specialist in commercial and intellectual property law at Hammonds LLP.

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