Legal protection of fragances through Intellectual Property

November 2021

Perfume is one sign of our identity. An essential accessory that we do not usually forget before leaving home. A scent that transports us to moments, memories and people. However, we must not forget that a fragrance is also a formula created from certain combined elements whose end result is a product: the perfume in question.

This leads us to think about its legal protection and that of its creators, as well as the most appropriate way to safeguard their Intellectual Property rights. Each fragrance on the market is individually characterized by the formula used by its creator(s), i.e. by its scent. But also by its brand name.

All fragrances are preceded by a name which is generally registered as a word, figurative or mixed trademark. In certain cases, where the packaging of the perfume in question meets the legal requirements, it can even be registered as a three-dimensional trademark. Sometimes even the product packaging itself, through the industrial design. This aspect is used in certain cases as an alternative to the 3D trademark.

Is perfumery a sector that can be protected through all branches of Intellectual Property?

COPYRIGHT:

Although it is not an easy protection to achieve when we talk about fragrances, there are pronouncements in this regard that make it possible to safeguard perfumers’ copyrights.

Intellectual Property Law –in all countries– defines what a work is for legal purposes and has an enumerated list of what we can consider as a ‘work’ by way of example. We emphasize the term ‘by way of example’ because it is an enunciative list and not a closed list. Therefore, a fragrance does not have to be considered as excluded from this list, but it will have to be analyzed whether a perfume meets the requirements of a work for the purposes of the requirements set out in the regulation.

The process of creating a perfume is a creative process of an intellectual nature in which perfumers, after an arduous search for combinations, select from among various possible olfactory options the most suitable ones to obtain a fragrance. In this way, the process does not seem very different from that of any other artist in the conception of his or her work (be it literary, architectural, scientific, etc.).

However it is strictly necessary that the perfume in question meets the requirement of originality, as required by the IPL. Only original perfumes are eligible for copyright protection.

Obviously, the question of whether a perfume is original or not is a complicated task that has given rise to a variety of opinions in the courts.

For example, the argument of the perishable and unstable nature of perfume once the bottle is uncorked, which begins to evaporate, degrades and eventually disappears, has been used by part of the doctrine and case law as a weapon against the interests of the perfume industry and, therefore, in favour of the thesis that perfume should not be protected by copyright.

However, other judgments correct this tendency and not only point out that both criteria are irrelevant from a copyright point of view, but also recall that once a musical work has been performed, nothing remains when the wind has blown away the last notes of the melody and, on the other hand, nobody doubts that a symphony is a copyrightable work[1].

In Kecofa vs. Lancôme, the Court analyzed a case of alleged copyright infringement in which it concluded that:

A. the smell of a perfume may meet the criteria established by the IPL to be considered as a work, even though it can only be perceived through the sense of smell;

B. a distinction is made between the fragrance of a perfume and its formula/liquid, comparing it with the paper of the pages of a book, which are not subject to copyright protection, whereas the content of the book is;

C. the requirement of originality means that a perfume that reproduces exactly – for example – the fragrance of roses cannot be granted protection, it is considered necessary for the perfumer to add his personal touch;

D. this does not mean that a work has to be absolutely new, but that the author must have applied his own creativity to it.

Some recommendations suggested by experts in the field in relation to the protection of a fragrance through this Intellectual Property figure, is to carry out a good documentation process during the creation of the perfume. In this way, if once the fragrance is obtained, it offers similarities with another existing fragrance, we will have the evidence of how the smell in question has been obtained, which may be a creative combination different to the one used by the existing one.

PATENT:

Although this modality may at first appear attractive and even appropriate to protect the formula by means of which the scent that makes up a perfume has been obtained, the truth is that obtaining a patent for a fragrance would be of doubtful effectiveness.

In the first place, it would be extremely difficult to obtain its registration, as it would be necessary to comply with the three legally established requirements to protect an invention: novelty, inventive step and industrial application.

No problem is being solved and no technical function is being fulfilled that would bring any novelty to the state of the art in any specific field. And, in any case, what could become the object of protection would be the formula as such by means of which the smell has been obtained, but not the smell itself.

This would also oblige us to disclose the process by which we have arrived at the fragrance and would allow future competitors to use it to their advantage, since the patent term is a maximum of 20 years. Therefore, the figure of a patent for a fragrance would be rather unfeasible if we are looking for a good protection of our perfume at a legal level.

WORD, FIGURATIVE OR MIXED TRADEMARK:

This is one of the most widespread options in the perfume sector to protect fragrances. Sometimes, they choose to protect only the name of the perfume (word trademark), other times -although to a lesser extent- they choose to protect a drawing, figure or logo (figurative trademark); and, when a broader level of protection is sought, companies decide to opt for a combination of both (mixed trademark). The latter is the most predominant option in the sector.

The major advantage of choosing any of the different trademark options is that protection can be unlimited (through extensions every 10 years). Consequently, this makes it possible to obtain exclusivity in front of third parties for the entire life of the trademark.

THREE-DIMENSIONAL TRADE MARK:

Although this is not an easy option to achieve, when the bottle or packaging of the perfume in question acquires a certain and important level of distinctiveness, it is possible to protect the bottle itself as a trademark.

The main objective remains to identify and differentiate a product or service in the marketplace from those of competitors. It is a way to recognize the products using mainly the sense of sight. However, these factors (distinctiveness and identification and differentiation of the product or service) are not an easy task as it is not always possible to protect the shape of the product through this form of Intellectual Property.

However, it is a type of trademark that tends to be used a lot in the perfumery sector as it allows users not to need to read the name of the trademark to recognize it, because the shape of the packaging itself makes them know which brand it is and what the business origin of the product is.

Some examples of this are the bottle of the Davidoff Cool Water fragrance (MUE 014297048) or the bottle of the “Bad Boy” perfume by Carolina Herrera, a company belonging to the Spanish fashion and beauty brand PUIG, whose catalogue of brands speaks for itself.

INDUSTRIAL DESIGN:

The alternative often used by companies when they fail to register their perfume bottle as a 3D trademark is the industrial design. In this case, the main purpose is not to identify and distinguish the corporate origin of the fragrance, nor is it required that the bottle has acquired distinctiveness, but what is protected is the aesthetic appearance of the product; that is, its ornamentation: the shape of the article, two-dimensional features such as lines, colours, etc.

In this case the requirements are novelty and uniqueness and it is one of the most commonly used legal options for IPR protection in the perfume industry. However, unlike a trademark, the protection of an industrial design is limited to 25 years.

Two examples of this option are the Lancôme perfumes: ‘Magnifique’ and ‘Idôle’. In the first case, the packaging of the fragrance is protected through the industrial design (Community design no. 000768031-0001); and, in the second, the bottle (Community design no. 005631835-0002).

OLFACTORY TRADE MARK:

Although it seems the most logical trademark typology to protect a perfume for Intellectual Property purposes, it is still a very recent figure with not too much trajectory.

Following the transposition of the EU Directive 2015/2436 of 16 December 2015 on the approximation of the laws of the Member States relating to trademarks, an evolution of the traditional concept of trademark took place, which includes non-visual trademarks in the catalogue of trademark typology; among them, olfactory trademarks.

An olfactory mark is the use of a smell, fragrance or aroma as a distinctive and unique differentiating feature of a product. In this way, the smell to our sense of smell would be like a logo to our sight: the one in charge of identifying the business origin of the product and of differentiating the brand in question in the market from the rest of the competition.

The requirements are the same for the olfactory mark as for any other type of trademark, i.e. distinctiveness and that the consumer is able to identify (in this case with the simple scent) the business origin of the product/brand in question, as well as its representation before the Register. However, given the particular difficulty of representation in the Register, there are still no olfactory marks granted in the perfume industry.

In this respect, the precedents set by the CJEU in the famous Sieckmann case have made a strong impact:

The representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Article 3(1) EUTMR) and the current state of technology does not allow for the representation of this type of mark under these conditions”. Furthermore, the EUTMR does not recognise the presentation of samples or specimens as an adequate representation. The description of a mark cannot replace the representation, because the description of a smell or taste is not clear, precise or objective”.

While it is true that this decision dates back to 2002, it is also true that this is still a very controversial issue and still difficult to represent. However, there is no doubt that, given the incipient advance of technology scent trademarks will end up being part of our reality.

The question is, will it be possible to register an olfactory trademark within the perfume industry and have a scent “monopolized”, for life?

Conclusion:

As a corollary, and as we are accustomed to recommend in the wide world of law, each case is different and must be analyzed individually. What we do agree on in this case is that it is recommended to approach a joint and comprehensive strategy, so that each of the preceding options is analyzed when protecting a fragrance, since the perfume industry is one of the most profitable and economic industries worldwide and deserves adequate protection of Intellectual Property rights.

Eduardo Zamora | Sara del Río


[1] La apropiación del olor: la protección del perfume a través del derecho de autor, Sergio Balañá Vicente, 2007. (“The appropriation of scent: protecting perfume through copyright”, Sergio Balañá Vicente, 2007)