Court of Appeal redraws rules on design and trademark rights

IP practitioners will need to update their textbooks on trademark and design rights after the Court of Appeal handed down two judgments within a week.

IP sets 11 South Square and Hogarth Chambers were the all-round winners, with their respective top silks Henry Carr QC and Roger Wyand QC taking the leading roles in both cases.

The country’s second highest court dismissed L’Oreal’s appeal against makers of copycat fragrances and gave its first clear guidance on the Community Design Right by overturning Procter & Gamble’s earlier packaging design win against Reckitt Benckiser in the High Court.

In a rare move, Lord Justice Jacob referred questions to the European Court of Justice (ECJ) in L’Oreal v Bellure to clarify the law on unfair advantage in lookand smell-alike fragrances. Unfair advantage is the act of using a prestigious trademark to market your own products.

Field Fisher Waterhouse (FFW) partner Hamish Porter, who is acting for defendants Starion International and Malaika Investments, said: “The Continental system of unfair advantage runs counter to the English approach of free competition, particularly in comparative advertising.”

Porter took the case with him from Addleshaw Goddard when he joined FFW last month, instructing Wyand. Baker & McKenzie acted for L’Oreal, instructing Carr.

On the Reckitt Benckiser case, Jacob LJ also stated that there was enough difference in the company’s Air Wick package design to not infringe Procter & Gamble’s Febreze design.

Jacob LJ clarified how the “overall impression” of a design can go some way to help decide whether a design infringes another with similar characteristics.

Bird & Bird partners Lorna Brazell and Morag MacDonald acted for Reckitt Benckiser, instructing Carr, while Howrey acted for Procter & Gamble, instructing Wyand.