Bakers wins over L’Oreal with Appeal Court victory

Baker & McKenzie has strengthened its ties with cosmetics company L’Oreal after winning a trade mark battle in the Court of Appeal.

The firm is also working on a separate Court of Appeal IP case for L’Oreal against Bellure, which is accused of copying the smell of the company’s range of perfumes, which is due to be heard at the end of the year.

Baker & McKenzie IP partner Paul Rawlinson said: “Historically L’Oreal spread that work around a bit but I think we’re starting to get the lion’s share of the work.”

The Court of Appeal ruling in favour of L’Oreal against rival cosmetic company Special Effects overturned a High Court decision that had discouraged IP owners to oppose UK trade mark applications.

The appeal was important enough to compel the International Trademark Association (INTA) to intervene.

The case hinged on whether L’Oreal could object twice in different circumstances to their rivals registering the words Special Effects as a trade mark in the UK.

The Court approved L’Oreal’s attempt to sue twice for trade mark infringement saying: “We hold that it is not an abuse of process for L’Oreal to raise by way of defence or counterclaim, for a declaration of invalidity.”

Baker & McKenzie instructed 11 South Square barristers Henry Carr QC and Jacqueline Reid.

Pinsent Masons advised Special Effects, instructing Richard Meade at 8 New Square.