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.
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...