Chanel, and famed cosmetics licensee Coty, initiated legal proceedings against Bargello – a Dutch perfume producer known for its imitations of well-known fragrance – to stop them selling “smell-alikes” including Chanel’s Chance and No. 5 fragrances, Chloe’s Love Chloe, and Calvin Klein Escape, and this week won the case. The win, which came from a Netherlands court, found that use of perfume comparisons constitutes trademark infringement when it crosses the boundaries of comparative advertising. “Smell-Alikes” are thriving in the industry at the moment, but thanks to the recent judgment original sellers and large corporations will have a stronger case to fight in court.

Bargello marketed its “smell-alike” perfumes by explicitly making a comparative link between each of its perfumes and a well-known perfume, such as Chanel No. 5. Moreover, according to a Bargello advertisement, it has sold more than 400 high-quality perfumes that were comparable to well-known brands’ perfumes. The ad claimed that “the only difference that consumers will notice will be to their wallets.”

Chanel and Coty argued that Bargello was taking unfair advantage of the distinctive character and reputation of their well-known trademarks. According to their complaint, by presenting its perfumes as imitations of those of Chanel and Coty, Bargello was benefiting from the widespread appeal and recognition of their trademarks without paying any financial compensation to do so.

Bargello refuted the claims, arguing that because it sold its perfumes in basic packaging, which did not resemble the trade dress of Chanel or Coty perfumes, it should not be on the hook for infringement, as customers would not confuse Bargello’s perfumes with those of Coty or Chanel and the plaintiffs did not suffer any damage as a result of its imitation.

The District Court of The Hague established that Coty’s and Chanel’s trademarks were well known due to continuing investments and efforts in advertising and protection. The court ruled that the use of these marks in comparative ads is permitted only if such use meets the cumulative requirements of the European Union Comparative Advertising Directive (84/450/EEC), as implemented in Dutch law. As with any comparative ad, Bargello’s ads should not present goods or services as imitations or replicas of goods or services bearing a protected trademark or trade name – this condition applies not only to counterfeit goods, but also to any imitation or replica. According to the court, Bargello’s ads crossed these boundaries.

It was also concluded that Chanel and Coty’s trademarks were used an unnecessary amount in Bargellos’s sales strategy to be classed as a comparative ad. In light of the distinctive character and reputation of Chanel’s and Coty’s marks, it concluded that Bargello was taking unfair advantage of the distinctive character and reputation of those trademarks.

No doubt this case will have a knock-on effect on the industry as a whole, preventing other companies doing the same and giving multi-national companies a stronger advantage in the courts.

For more information, head to The Fashion Law.

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