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Wednesday, 1 June 2011

Smell-alike perfumes - the Bundesgerichtshof's view

On 5 May 2011, the First Civil Senate of the German Federal Supreme Court (Bundesgerichtshof) which is, inter alia, responsible for competition law matters decided that trading with smell-alike perfumes, that are imitations of perfume products that are bearing a protected trade mark does not qualify as unlawful (unlauter) comparative advertising in the sense of Article 6 (2) No. 6 German Unfair Competition Act (UWG) if there is no clear and obvious imitation of the original perfume but where the smell-alike perfume merely evokes an allusion of the original products (case reference: I ZR 157/09 - Creation Lamis).

By way of background: Article 6 UWG is based on Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, in particular its Article 2 (c) and its Article 4.

The facts: the defendants were offering low priced perfumes on the Internet under the mark "Creation Lamis". These low priced perfumes had similar smells to those of expensive perfume brands. The defendants initially also used ‘comparison charts’ which compared the defendants' smell-alike perfumes with the respective high priced original perfume brand. The defendants had, however, ceased using the comparison charts in recent years.

The claimant, who is a distributor of high priced luxury perfumes brands, took objection to this in its view unfair business practice. The claimant argued that the defendants’ offering, advertising and distribution of the smell-alike perfumes amounted to unfair competition since the smell-alikes were recognisable as imitations of the claimant's high priced original perfume brands all of which where registered as trade marks. The claimant had been unsuccessful in the lower instance courts insofar as it had tried to prevent the defendants' trade with the smell-alikes without the use of comparison charts. In this regard the Bundesgerichtshof allowed the claimant's appeal and sent the case back to the court of appeal, the Kammergericht Berlin.

The Bundesgerichtshof explained that Article 6 (2) No. 6 UWG does not prohibit to imitate an original product. Furthermore, it will not amount to unfair comparative advertising in the sense of Article 6 (2) No. 6 UWG where the original product is recognisable due to the get-up and labelling of the respective imitation (here the smell-alike) even if its advertising evokes certain allusions. What is prohibited under Article 6 (2) No. 6 UWG is a clear and definite imitation statement (Imitationsbehauptung) which makes it clear by itself - and without the need to consider any additional circumstances - that the advertised product is advertised as a copy of a certain and specific original product.

The court of appeal had assessed the question as to whether there was a clear and obvious imitation statement by looking at the end user's perspective and decided that there was no imitiation in the sense of Article 6 (2) No. 6 UWG in this case. The Bundesgerichtshof confirmed that the court of appeal had determined the facts correctly with regard to the end-user perspective.

However, the Bundesgerichtshof found that the court of appeal's decision had not discussed the claimant's argument that the defendant had also targeted retailers with its smell-alike perfumes and not only end users. The claimants had argued that retailers, who had a more specialised knowledge, would have recognised the defendants' smell-alike perfumes as clear imitations of the original luxury perfumes due their 'get-up' (Ausstattung) and their allusive names. In this regard the Bundesgerichts stressed that where an advertisement was targeting different groups of consumers, it was enough to render such an advertisement "unfair" if the conditions of Article 6 (2) No. 6 UWG where met for only one group of the consumers targeted (here: the retailers). As such, the Bundesgerichtshof decided to overturn the court of appeal's decision and send the case back to the court of appeal. The Bundesgerichtshof also held the court of appeal should examine whether the defendants' advertising towards retailers amounted to an exploitation of the reputation of the claimant's trade marks.

While some German observers have already stated that the court has made it easier to trade with smell-alike perfumes due to the relatively high threshold for the application of Article 6 (2) No. 6 UWG, it should be kept in mind that the court of appeal might find that retailers would easily recognise the smell-alikes as imitations of one particular perfume. This Kat will be interested to read the Bundesgerichtshof's decision in its entirety once it becomes available, as well as the Kammergericht Berlin's actual decision in this particular case. Perfumes clearly make for interesting trade mark cases.

The court's press release can be retrieved by clicking here (in German)
Perfume for cats - here.


Anonymous said...

Why all those trials concurning perfume? Cf Craig, 'Perfume by Any Other Name May Smell as Sweet…But Who Can Say?: A Comment on L’Oreal v. Bellure',Intellectual Property Journal, 2010,pp. 321-334.

Emil A. Georgiev said...

An interesting decision, taking into consideration the otherwise restrictive interpretation of German courts in unfair competition matters.

maurizio said...

It seems that trade mark registration is the only viable option to protect smells. Why then is this route so rarely attempted? See S. Karapapa 'Registering Scents as Community Trade Marks', The Trademark Reporter, vol. 100, no. 6 (2010)

Anonymous said...

Craig´s available at:

Tomek said...

Ok, so the Bundesgerichtshof says that if the retailers can easily recognise the smell-alikes as imitations of one particular perfume, then this equals a clear and definite imitation statement that the advertised product is advertised as a copy of a certain and specific original product.

The way I see it, the court thus grants copyright protection to perfumes, because it makes it unlawful to sell perfumes which are identical with the original ones.

What if we applied the same reasoning to, say, food? If someone sold drinks tasting exactly the same as some drink X, which is per se not unlawful, because flavour is not copyrighted, then they could still be prohibited from doing so, because the fact that the consumers would clearly recognize the flavour would entail that it was an "imitation statement".

Or am i getting something wrong here?

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