1. EQUIVALENT PERFUMES – Remedies under Trademark, Unfair Competition and Antitrust perspective
Interlaw Seminar – 23 March 2015

2. EQUIVALENT PERFUMES – Remedies under Trademark, Unfair Competition and Antitrust perspective

3. In some occasions, diclaimers excluding the risk of confusion
Equivalent perfumes with reference to third parties’ trademarks What are they?
Imitation of the fragance of a perfume identified with a well-known trademark
Reference to the trademark of the imitated perfume or in which it is inspired
Comparison lists
Trademark search engines
Label with the well-known trademark under each reference
Verbal mention
Combination of the above
In some occasions, diclaimers excluding the risk of confusion
Use of a similar trademark

4. Comparison lists with express indication of the third party’s trademark
“The indication of the equivalences to which our fragances correspond is, solely, an orientation on their olfative tendence. In any case they are creations that do not have any relation with the original trademarks”

5. Trademark search engines

6. Transcription of third parties’ trademarks on a label under the bottle

7. Use of a similar name or that reminds the third party’s trademark (also indicating, or not, the well-known trademark that it recalls)

8. List with use of similar names

9. Commercialisation of the equivalent perfume in a similar packaging,

10. The phenomenon in Spain
Franchising / monobrand stores
REFAN (186)
EQUIVALENZA (343)
LA BOTICA DE LOS PERFUMES (113)
PERFUMARTE (90)
100 FRAGANCIAS (69)
PERFUMHADA (53)
AROMAS ARTESANALES (31)
FRAGANCIAS DEL MUNDO (32)
WOMAN 30 PERFUMES (13)
INSPIRAZZIONE (6)
SON TUS AROMAS (5)
OTHERS…
Conventional retail
SUPERMARKETS: CARAVAN*, FASHION & FRAGANCES, AMPHORA
PHARMACIES: IAP PARFUMS*, CREACIONES Y FRAGANCIAS*,
TOBACCO REGULATED STORES, PERFUMERIES, HAIR DRESSERS: SAPHIR*
TRADITIONAL AND SOUVENIR STORES: CREACIONES Y FRAGANCIAS*
Direct sales - Internet
essenzia.com*
vismaressence.com*
essensi.com*
amares13.com*
equivalenza.com
aromasartesanales.es*
coquerel.es
secretsociety.es*
Etc.
In red JIS CAPITAL GLOBAL SL
- 80M € (2013)
- 124 M € (2014)
- 9,6% market of P&F
-39M €
(2013)
-50M € (2014)

11. Monobrand stores

12. Display cases in traditional stores

13. Internet

14. Internet

15. Internet

16. Internet

17. Exponential evolution
New dimension
Marginal
shops
Monobrand shops and franchise shops
Internet
Supermarkets and hipermarkets
Hair-dressers
Pharmacies
Tobacco-regulated stores / souvenirs shops
¡Appearance of legality!

18. Legal analysis – Judgments based on the Unfair Competition Act rendered before the Judgment of the CJEU L’oreal / Bellure
Judgment of the Appeal Court of Toledo of 28 February 2001, Loewe vs. Yodeyma
“Consumers do not buy the perfume for the interest that the defendant’s trademark entails, but because it is offered as an imitation of prestigious trademarks, that without no doubt have a strong selling power […] And it is evident that this entails the taking of undue profit of each other’s reputation, which is prohibited by Article the Unfair Competition Act”.
Judgment of the Appeal Court of Toledo of 8 January 2002, Chanel / Christian Dior vs. Yodeyma
The use of renown trademarks is contrary to the Unfair Competition Act, as it takes unfair advantage of each other’s reputation., not being it necessary to indicate the destination of a product as it happens for example in cases of accessories or spare parts.
Judgment of the Court of Appeal of Malaga of 21 April 2004, Sogesco vs. Dura y Enriquez SL
The public is attracted not by the qualities of what is being sold, but by the reference to another product known on the market, and for this reason it is presented as a fundamental reference for the sale.

19. Judgement CJEU 18/06/2009 - L’Oreal vs Bellure - Case C-487/07 (1):
FACTS
Claim from L’Oréal, Lancôme and Garnier against several companies that commercialised perfumes that imitated the smell of well-known trademarks ownership of the plaintiffs. Use of comparison lists. Some of the packaging used by the defendants were generally similar to those of the “original” brands
Request for a preliminary ruling from the Court of Appeal -England and Wales- on the interpretation of the Trademarks Directive (89/104) and the Misleading and Comparative Advertising Directive (84/450)
JUDGMENT AND LEGAL REASONNING
Concerning the Misleading and Comparative Advertising Directive, the CJUE held that:
The use of comparison lists constitutes comparative advertising that falls under the Misleading and Comparative Advertising Directive.
An advertiser who states explicitly or implicitly in comparative advertisement that the product that it commercialises is an imitation of a product identified with a renown trademark, is presenting “a good or a service as an imitation or replica” in the sense of Article 3 bis, paragraph 1, letter h) of the Misleading and Comparative Advertising Directive, which determines that the comparative advertising is unlawful.
Furthermore, the advantage obtained by the advertiser as a result of such unlawful comparative advertising must be considered to be an advantage taken unfairly of the reputation of that trademark in the sense of Article 3 bis, paragraph 1, letter g), which entails a second reason for which the comparative advertising must be considered as unlawful.

20. Judgement CJEU 18/06/2009 - L’Oreal vs Bellure - Case C-487/07 (2):
Concerning the Trademarks Directive, the CJEU held that:
- The owner of a trademark is entitled under Article 5.1.a) of the Trademarks Directive, to prevent the use by a third party, in an unlawful comparative advertising, of a sign identical with that mark in relation to goods or services identical with those for which that trademark was registered, even where such use is not capable of jeopardising the essential function of the mark, which is to indicate the origin of the goods or services, provided that such use affects or is liable to affect one of the other functions of the trademark.
- The third party that makes use of a sign similar to a renown trademark obtains an unfair advantage of its distinctive character or the renown of that trademark and, therefore, it infringes Art. 5.2 of the Trademark Directive, where by that use it seeks to ride on the coat-tail of the renown trademark in order to: (i) benefit from its power of attraction its reputation or its prestige and; (ii) exploit the commecial effort made by the owner of the trademark to create and mantain its image without offering in exchange any finantial compensation.
Other functions of the mark: guaranteing the quality of the goods in question and those of communcation, investment or advertising
It is for the national Court to determine, in the framework of a global assessment, taking into account all factors and relevant circumstances of the case, whether the use of a sign takes unfair advantage of the trademark

21. Judgment of the Community Trademark Court nº 1 of 28 January 2014, Carolina Herrera and others vs Equivalenza and others and Judgment of the Community Trademark Appeal Court of 13 June 2014 (1)
FACTS:
Claim filed by CAROLINA HERRERA LIMITED, PUIG FRANCE SAS and ANTONIO PUIG SA, based on trademark infringement and unfair competition
against the offer for sale, advertisement and promotion by CATALEG SERVEIS INTEGRALS SL and EQUIVALENZA RETAIL SL, directly and through franshisees, of equivalent perfumes making reference to renown trademarks belonging to the plaintiffs
LEGAL GROUNDS
The Judgment uphelds the claim based on trademark infringement, on the basis of Articles 9.1.c) of CTMR and 34.2.c) of the Spanish Trademarks Act, that grant to the owner of a well-known registered Community and Spanish Trademark, the right to prevent the use by third parties in the economic trade, without its consent, of any sign identical or similar to that trademark where such use without due cause takes undue profit of the renown of the registered trademark..
With the use of comparison lists the defendants take undue profit of the renown of the plaintiffs’ registered trademarks, in the framewrok of a behavior that must be qualified as parasitism.
The Judgment rejects the arguments of the defendants: (i) the use of the plaintiffs’ trademarks is not atypical, nor descriptive of the properties of the products it has an advertising aim; (ii) we are not in front of any of the limits to the trademark rights provided for in the CTMR or the Spanish Trademarks Act, as the use of third parties’ trademark rights is not a descriptive indication of the characteristics of the product. Which is descriptive is the denomination of a smell or of an olfactive family as « floral », « fruity» etc., and it is not, in any case, a fair use.
L?oreal, Lancome and Garnier against Bellure, Malaika and Starion. The plaintiffs wer owner ofthe renown trademarks Tresor, Miracle, Anais Anais and Noa
to identify well-known perfumes.  The defendants manufactured and sold imitations of fine fragrances. The bottle and packaging in which they were sold were generally similar in appearance to those of the imitated brands.
The defendants used comparison lists that indicated the word mark of the fine fragrance of which the perfume being marketed was an imitation.
The plaintiffs initiated proceedings against the defendants before the High Court of Justice of England and Wales (Chancery Division) alleging infringement of their trade mark rights.

22. Judgment of the Community Trademark Court nº 1 of 28 January 2014, Carolina Herrera and others vs Equivalenza and others and Judgment of the Community Trademark Appeal Court of 13 June 2014 (2)
The Judgment uphelds the claim based on the Unfair Competition Act exercised by PUIG SA: the practice followed by EQUIVALENZA is qualified as unlawful comparative advertising that contravenes Articles 10 and 12 of the Unfair Competition Act, as the products are presented as replicas of perfumes bearing the plaintiffs’ trademarks and they take undue profit of their reputation..

23. Judgment of the Community Trademark Court nº 2 of 14 January 2015, Carolina Herrera and others vs Caravan Fragancias and others
FACTS:
Claim filed by CAROLINA HERRERA LIMITED, PUIG FRANCE SAS, GAULME SAS and ANTONIO PUIG SA, based on trademark infringement and unfair competitionagainst the offer for sale, advertisement and promotion by INDUSTRIA ARAGONESA DEL PERFUME S.L., CARAVAN FRAGANCIAS S.L.,, LABORATORIOS SAPHIR S.A. and GRUPO EL ARBOL DISTRIBUCION Y SUPERMERCADOS, of equivalent perfumes making reference to renown trademarks belonging to the plaintiffs
LEGAL GROUNDS
The Judgment uphelds the claim based on trademark infringement, on the basis of:
Article 9.1.a) of CTMR and 34.2.a) of the Spanish Trademarks Act, that grant to the owner of a Community and Spanish Trademark, the right to prevent the use by third parties in the economic trade, without its consent, of any sign identical to that trademark to identified godos identical to those for whish the trademark is registered. The use made by the defendants of the plaintiffs’ trademarks does not geopardise the essential function of the trademark (the identification of the comercial origin), but the other functions of the trademark might be geopardised where by such use the defendants are taking unfair profit of the renown of the trademarks.
Article 9.1.c) of CTMR and 34.2.c) of the Spanish Trademarks Act, that grant to the owner of a well-known registered Community and Spanish Trademark, the right to prevent the use by third parties in the economic trade, without its consent, of any sign identical or similar to that trademark where such use without due cause takes undue profit of the renown of the registered trademark..

24. Judgment of the Community Trademark Court nº 2 of 14 January 2015, Carolina Herrera and others vs Caravan Fragancias and others
Article 9.1.c) of CTMR and 34.2.c) of the Spanish Trademarks Act, that grant to the owner of a well-known registered Community and Spanish Trademark, the right to prevent the use by third parties in the economic trade, without its consent, of any sign identical or similar to that trademark where such use without due cause takes undue profit of the renown of the registered trademark.
We are not in front of any of the limits to the trademark rights provided for in the CTMR or the Spanish Trademarks Act, as:
(i) the use of third parties’ trademark is not necessary to indicate the characteristis of the product. It is convenient, but not necessary;
(ii) telling the public to which trademark the product corresponds or smells like, goes beyond the description, and supposes an undue profit of the prestige, renown, quality and advertisement of the trademark to make the product more competitive.

25. Judgment of the Community Trademark Court nº 2 of 14 January 2015, Carolina Herrera and others vs Caravan Fragancias and others
The Judgment uphelds the claim based on the Unfair Competition Act exercised by PUIG SA: the practice followed by EQUIVALENZA is qualified as unlawful comparative advertising that contravenes Articles 10 and 12 of the Unfair Competition Act, as the products are presented as replicas of perfumes bearing the plaintiffs’ trademarks and they take undue profit of their reputation..