Bakers scores trademark victory in L’Oréal appeal

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

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

Bakers IP partner Paul Rawlinson said: “Historically L’Oréal spread that work around, but I think we’re starting to get the lion’s share of the work.”

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

The appeal was important enough to compel the International Trademark Association to intervene. The case hinged on whether L’Oréal could object twice in different circumstances to their rivals registering the words ‘Special Effects’ as a trademark in the UK.

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

Bakers instructed 11 South Square barristers Henry Carr QC and Jacqueline Reid.

Pinsent Masons advised Special Effects.