If the ship of good fragrance had recently sunk in the French ocean of copyright protection1, giants of the perfume industry will undoubtedly be more satisfied with the recent judgment of the Paris Court of First Instance ruling against a website selling non-branded perfumes which had been presented as equivalent to well-known original perfumes.
A vast armada of trade mark owners (including L’Oreal, Lancôme Parfums, Yves Saint Laurent Parfums, Giorgio Armani, Guerlain, Kenzo, Chanel, etc.) initiated an action against a French company (“PIN”) operating a website called “pirate-parfum.fr”.
The concept of the website was to “liberate the most renowned fragrances” presented as too expensive and to sell perfumes for a price composed of “95% product, 5% marketing, whereas this formula is completely reversed in every other case”. Users of the website were invited to enter the name of a specific branded perfume in a search engine, allowing them to “find their product and compare”. They were then directed to a page offering a perfume presented as “featuring the same main ingredients”. The search engine thus made a comparison between the products sold on the defendant’s website and the branded perfumes of the claimants.
The Court recalled the terms of the ECJ case O2 Holdings Ltd & Anor v Hutchison 3G UK Ltd according to which the rights owner is not entitled to prevent lawful comparative advertising. Nonetheless, the judges found that PIN had infringed the claimants’ trade marks through unlawful comparative advertising as the website presented its own products as an imitation of the original fragrances and took unfair advantage of the reputation of the trade marks. PIN’s use was more than purely descriptive. The Court found that there was no risk of confusion between the products as the perfume bottles were different and the claimants’ products were clearly identified as competing perfumes not sold on the website. Such use was clearly not capable of jeopardizing the essential function of the marks (namely, to guarantee origin).
However, consistently with the L’Oréal/Bellure case, the French judges held that an effect on the communication, investment and advertising functions would also lead to infringement. The Court found that PIN’s use did affect those functions, which the Court described as very important for the renowned marks in question which are commonly associated by the public with luxury.
Importantly, the defendant was ordered to pay a total amount of EUR1,128,000 in damages, split between the various claimants. Through this damages award (exceptionally high in trade mark cases), the Paris Court loudly reaffirmed the willingness of the French Courts to protect trade mark owners. This judgment is another example demonstrating that one should be more than cautious before launching any activity involving comparison charts.