Is Selling Perfumes with Similar Scents using Famous Brand Names as Indicators Considered Trademark Infringement ?
Does selling perfumes with similiar scent to those of famous brand names, while using the translated names of such brands as indicators, qualify as trademark infringement ?
In the fragrance industry, companies invest extensive efforts to establishing a unique commercial identity and recognizable scents.
This involves also creating exquisite perfume bottles, crafting distinct fragrances and planning meticulous promotional campaigns.
Certain renowned fragrances are distinguishable even from a distance.
Background
A recent Israeli court ruling delved into a situation where a company producing cheap perfumes claimed their scents closely resembled those of high-end perfumes.
The Defendant used translated names (to Hebrew) of famous perfume brands for association and identification, such as Chloe, Hugo Boss, Britney Jean Spears, Lancome, ZINO DAVIDOFF and more.
Below are the defendant’s bottles and sale presentations:
The Defendant used the words COMPATIBLE SCENT (in hebrew) in proximity to the translated names of the brands. They didn’t use the logos or English names of the famous brands.
The dispute questioned the legality of this practice and whether the defendant company had infringed trademark law.
The defendant argued its actions were permissible as customers were aware they were buying their products, not those from the trademark owners, therefore there could be no confusion.
The case raised fundamental questions:
Did the defendant infring the trademark law using similar marks in Hebrew ?
Could the defendant claim the “fair use” doctrine, asserting their use of trademarks aimed to describe their products?
Did the defendant commit unlawful enrichment ?
The Judgmnent
The District Court dismissed the lawsuit. It held that directly using registered trademarks by third parties could infringe trademarks. Similarly, copying them with minor differences not creating substantial distinction could also be infringement.
Nevertheless, Israeli law allows referencing products with registered trademarks for similar goods, as long as no consumer confusion arises.
The Court determined that the defendant’s actions did not infringe upon the plaintiffs’ trademark rights, since there is no confusion, and considering that the references to the brand names were presented in good faith by the defandnats.
The Court also ruled that the use of the translated names of the famous brands is not considered to be “trademark use”, under trademark law, therefore there is no trademark infringement.
Names of Perfume Brands as Indicators – Reasonable and True Use
The judge decided that the use of the translated names of such brands is anyway a true and reasonable use of the mark, which supports the fair use claim.
The Court required the defendant to prove fragrance similarities and decided that the defendants has succeeded proving such a similarity.
However, the Court imposed practical adjustments for the Defendant’s products sold in Israel. The English term “Compatible” on labels had to be replaced with its Hebrew equivalent, with a larger font size for visibility.
In conclusion, the Court ruled defendant’s practices is not considered to be trademark infringement or any violation of other laws (such as publicity right or unjust enrichment).
This instance highlights the intricate balance between potential trademark infringement and the legitimate utilization of brand names as indicators. Interestingly, within the past two years, the market has once again ventured to explore the boundaries of trademark protection within the perfume brand domain.
A Trend in Perfume Cases – Prioritizing the Interests of Free Competition over the Rights of Trademark Owners
In a prior occurrence, a distinct case emerged where the defendants marketed original perfume liquids, delicately poured into compact bottles, while utilizing the “Channel” brand name as an indicator. This particular case progressed through the legal system, culminating in an appeal to the Supreme Court subsequent to the District Court’s initial ruling. The District Court’s verdict maintained that the sale of original perfume liquids employing brand names as indicators did not amount to trademark infringement. The Supreme Court then engaged in the case and remanded it to the District Court. The task at hand was to assess, guided by the expert opinions submitted by the involved parties, whether the act of rebottling substantially altered the perfumes. This determination stands as yet another illustration of how Israeli courts exhibit a propensity for prioritizing the interests of open competition over the rights held by trademark owners.
We estimate that an appeal will be soon filed against this judgment.
C.F. (Tel-Aviv District Court) 61865-03-17 Chloe S.A.S and others v. Oil le Amor Ltd. (July 30, 2023).
Disclaimer: nothing in the above shall be considered as any legal advice whatsover.
