We’ve all been there – well maybe not ALL.
Your social calendar is fully booked with events, and you wouldn’t dare wear the same outfit, shoes, or even the same scent twice! As a result, your closet may be bursting with clothes and footwear, but you probably only own one nice perfume. Owning a variety of luxury fragrances without breaking the bank is precisely ScentWish’s mission. ScentWish, an Israeli perfumier, markets brand-name perfumes, such as the highly coveted Chanel N°5, in cheaper, smaller vials, allowing consumers to enjoy the extravagant fragrance without the steep price.
Is this an infringement of Chanel’s intellectual property rights?
Let’s just say that to answer this, the case reached the Israeli Supreme Court!
Chanel caught scent (!) of ScentWish’s operation and issued a cease-and-desist letter, demanding that ScentWish stop selling their fragrances. ScentWish turned to the Tel Aviv District Court to declare that they are operating within the confines of the law and do not infringe upon Chanel’s intellectual property. The Court determined that ScentWish was permitted to use the Chanel trademarks on their products but needed to make it clearer that they are not affiliated with Chanel, reasoning that the use of the Chanel trademarks was considered ‘actual use’ since it was used in conjunction with a Chanel product.
Chanel appealed to the Israeli Supreme Court. Among their claims, they argued that the ScentWish bottles bearing the Chanel trademark may cause consumers to believe the two companies are commercially affiliated, that the plain ScentWish bottles harm their goodwill, that ScentWish’s use of the Chanel trademark cannot qualify as “actual use”, and that the rebottling of the perfumes affects the chemical composition of the perfume.
The Israeli Supreme Court stated that the District Court’s analysis of “actual use” was flawed since it did not address two of Chanel’s claims – damage to the chemical composition of the perfume and goodwill dilution due to the plain ScentWish bottles.
The Israeli Supreme Court ruled that Chanel failed to prove any financial loss due to dilution but remanded the first claim back to the District Court to ascertain whether the chemical composition of the perfume was indeed affected.
If the District Court finds that ScentWish’s rebottling affects the chemical composition of brand name perfumes, their use will not be protected under “actual use”.
In the meanwhile, we may have to go back to wearing the same perfume to multiple events!