KIND-HART COURT REFUSES TO STRIKE OUT TRESOR, MIRACLE CLAIMS

This gem has appeared on the LexisNexis All England Direct subscription service: L’Oreal SA and others v Bellure NV and others, a Chancery Division decision of Mr Justice Hart dated 26 January.

L'Oreal, who made and sold perfumes and cosmetics, was the registered owner of a number of trade marks relating to two of its perfumes, ‘Trésor’ and ‘Miracle’. L'Oreal alleged that certain perfume products sold by Bellure, by the names ‘Coffret d’Or’, ‘La Valeur’ and ‘Pink Wonder’, infringed its trade marks under sections 10(2) and (3) of the Trade Marks Act 1994.

L'Oreal also complained that Bellure were guilty of passing off in respect of those and other products. Bellure applied to the court, seeking an order striking out the allegations relating to trade mark infringement and/or summary judgment. Bellure argued that none of the signs relied on by L'Oreal was similar to any of the registered marks at issue.

Hart J dismissed Bellure's a application. He concluded as follows:

* First, in determining issues as to similarity under sections 10(2) and (3) of the 1994 Act, it was unnecessary for a claimant to have proved that a likelihood of confusion existed in order to establish that there was a similarity between its registered marks and the signs used by the
defendant.

* Secondly, since L'Oreal's action for passing off was expected to proceed to trial, the issue of similarity might be resolved more readily by the trial judge, as he would have the benefit of the evidence adduced in relation to the alleged passing off.

It would be a miracle if the Bellures of this world surrendered without a good legal fight

The IPKat would like to read the transcript and see exactly what Bellure was arguing. He hasn't heard of an argument that similarity needs to be based on the need to establish a likelihood of confusion and wonders just what might have possibly been its legal origins. Merpel says: "is it really being argued that Bellure's ‘Coffret d’Or’, ‘La Valeur’ and ‘Pink Wonder’ marks are similar to L'Oreal's ‘Trésor’ and ‘Miracle’ marks, or has something been lost in the process of digesting the case?

STOP PRESS: since posting this blog, the IPKat has read the note on it that appeared on the Lawtel subscription service this morning. The note reads quite differently from All England's. According to Lawtel, the decision runs as follows:

"While the initial impression was that there was a lack of any relevant similarity in the packaging of the perfumes, it did not follow that the question of similarity should be considered in a vacuum and be determined now on the information before the court. Trade Marks Act 1994 s.10(2) required a determination of whether any similarity was sufficient to give rise to a likelihood of confusion so where the question was whether there was sufficient similarity between B's signs and L's marks, it was proper to take into account the reputation of L's marks, Sabel BV v Puma AG [1999] RPC 199 considered. Given that the action was going to trial on the question of passing off alleged in a pleading not at issue on the instant application, it was preferable that the trial judge should be left with the question of similarity and confusion.

(2) L's claim that it had suffered damage to its goodwill and was therefore entitled to a remedy did not depend on any element of deception. As the law stood, the allegation was hopeless. However as all questions of fact relevant to the non-existent tort would be before the trial judge in any event, it was appropriate for the issue to be left for the trial judge to determine".

The full judgment is still unobtainable off the internet, though it may be ordered commercially through Lawtel.

Other Tresor here and here
More Miracles here and here