European Court Confirms The Value Of Protecting Product Get-Up

Profession:Harrison Goddard Foote

Article by Tom Farrand

A recent judgment by the ECJ has confirmed the value of

registering Trade Marks covering the get-up1 of


In June of this year the European Court of Justice (ECJ)

published its judgment in response to various questions referred to

it by the UK Court of Appeal. The case related to the getup of

perfume products owned by L'Oreal and so-called

'smell-alike' products sold by the defendant.

In a situation where the offending smell-alike products were

said to 'wink' at the L'Oreal products by imitating

aspects of the get-up and brand-name, the ECJ ruled that the

defendant's product took unfair advantage of L'Oreal's

reputation, was detrimental to L'Oreal and its trade marks, and

thus infringed L'Oreal's registered trade mark rights.

More recently, and following on from the above, Diageo

– the owner of the famous PIMM'S trade mark

– has commenced legal action against the supermarket

chain Sainsbury's in which Diageo objects to Sainsbury's

look-alike product PITCHER'S.

This development is interesting because Sainsbury's is an

important customer for Diageo and it is unusual for brand owners to

take action against the supermarkets. These developments have

implications for brand owners.

Practice Points:

The registration of labels, bottles, containers, packaging and

the overall shape and appearance of a product is recommended. It is

of particular interest that the ECJ has effectively confirmed that

there is real value in registering the get-up of products in order

to be in the best position to prevent imitations. Trade mark owners

should review the get-up of their products and register any

important features that are not...

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