IL TM Update: Court holds that smell-a-likes are not infringing
In a recent judgment, the Tel Aviv District Court held that the marketing of smell alike perfumes does not amount to trademark infringement and does not violate other goodwill-related causes of action.
The defendant’s products were marketed under the defendant’s name “Oil de L’amor” below which appeared the word “compatible” in small font and then in larger font appeared the imitated brand with an intentional misspelling (e.g. CLOE instead of CHLOE, DAVDIOFF instead of DAVIDOFF, etc.). In promotional materials, the brand names were transliterated to Hebrew.
The court held that the plaintiffs failed to establish that consumers were misled to assume they are purchasing products originating from or endorsed by the original manufacturers. Based on the defendant’s evidence, the court further held that while the scents of the products are not identical to the original branded products, they are sufficiently similar to justify their characterization as ‘compatible’. The court declined to regard the acts of the defendant as unfair exploitation of the plaintiffs’ goodwill that may eventually tarnish the marks’ image but preferred the approach that the defendant is merely conveying information on the characteristics of its products. The court accordingly held that the defendant is entitled to the ‘genuine use’ defense.
This judgment is a second recent setback for brand owners in the perfume industry. In another recent judgment, it was held that the transferring of CHANEL perfumes to smaller containers and the rebranding of such containers under the CHANEL trademarks do not amount to trademark infringement, provided that the repackaging does not affect the properties of the product. These judgments with respect to trademark infringement in the perfume industry may have adverse long-term consequences for brand owners in other industries and illustrate how critical it is to provide a strong evidentiary basis when pursuing more sophisticated trademark infringements.
[C.F 61865-03-17 Chloe v. Oil de L’Amor Ltd. ; C.A 8668/19 Chanel v. Saint Wish Ltd.]
This update article is provided for general information only and is not in lieu of legal advice. Please contact us directly for any required advice on specific matters.