There’s an interesting debate going on as to what, if any, legal protection fragrances should enjoy. This debate has been ignited by a recent French court decision dealing with copyright.

In an article that appeared in the 2 July 2014 issue of the publication The Business of Fashion (B&F) entitled On Why Fragrances Should Qualify for IP Protection, the author, Kimiya Shams, claims that both innovation and imitation are at the heart of the perfume business, with the result that there should be IP protection for fragrances. Especially in the light of the fact that the global fragrance market is worth upwards of US$28 billion per year, with the small French town of Grasse - ‘the perfume capital of the world’ - itself producing perfumes worth some US$800 million per year. Shams says that this is a very competitive industry, where companies spend up to 12% of their revenue on R&D, yet one in three perfumes fails, and the average lifespan of a fragrance is somewhere between three and four years. Shams finds it absurd that, despite the fact that a bottle of Chanel No. 5 is sold every 55 seconds, there’s no protection for fragrances. Some of the comments posted in response to the article are particularly interesting, with one suggesting that perfumes are no different from musical works, being ‘composed’ and ‘unfolding’ over time, and another suggesting that they are ‘constructed’ like works of architecture. So why aren’t they treated like musical or artistic works?

The publication Managing Intellectual Property (MIP) discussed the issue too in a piece entitled The Sweet Smell of Success - or Failure(9 July 2014). It suggested that there would be little enthusiasm for any specific protection for fragrances. The discussion that appeared on the publication’s LinkedIn page revealed some interesting views, with one commentator suggesting that there is little need for specific protection for an industry that seems to be doing so well, and another suggesting that there’s little difference between the situation facing the perfume houses and that facing another group closely associated with France, the great chefs.

So what, if any, IP protection does exist for fragrances? It may come as a surprise to some readers to hear that trade mark protection is a possibility. If you think of trade marks as simply being names or logos, think again – a trade mark can be just about anything that identifies and distinguishes a product, including a product shape, a colour, a store layout and a sound. But a smell?

In the USA a few scent trade marks have been registered, including one described as a ‘floral fragrance reminiscent of Plumeria blossom’ for yarn and thread. What’s noticeable here is that the idea of a company applying a particular scent to the yarn or thread that is sells is pretty unusual or arbitrary. As was the idea of the company that applied the smell of fresh cut grass to tennis balls, and managed to get a trade mark registration for that scent in the EU.

But things are far from straightforward, especially in the EU. For starters, with perfumes there is the argument that the smell is the product rather than a trade mark – an application to register the scent of Chanel No. 5 as a trade mark in the UK failed because the authorities said that the smell was the essence of the product.

Furthermore, the EU trade mark authorities have made it clear that in order to meet the requirement that a trade mark must be capable of being represented graphically to be registrable, the representation that’s lodged with the Trade Marks Registry must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’ - something that’s very difficult with scents. In the famous case of Ralph Sieckmann, which involved an application to register a scent described as ‘balsamically fruity with a hint of cinnamon’, the European authorities held that the requirement of a graphical representation is not satisfied by a chemical formula, a written description, or a deposit of an odour sample with the Registry. In fact, it said that the requirement isn’t even satisfied if all three of these things are lodged. It unfortunately didn’t say what would be sufficient. It’s worth noting that the requirement that a trade mark must be capable of being represented graphically is to be changed in the EU, and it’s possible that scent trade mark registrations may become easier in future.

I’m not aware of any scent trade mark that has been registered in South Africa, never mind one for a perfume. South African trade mark law follows EU law closely and also requires that a trade mark must be ‘capable of being represented graphically’ in order to be registrable. It goes on to give a non-exclusive list of what might comprise a trade mark - ‘a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or containers for goods or any combination of the aforementioned.’ I suspect that a scent trade mark application is likely to struggle in South Africa.

So, the likelihood of trade mark protection for a fragrance is slim. But what about other IP rights? Hard as it may be to believe, a Dutch court in the case of Lancôme v Kecofa ruled that Lancôme’s perfume, Tresor, enjoyed copyright, and that this copyright had been infringed because 24 of the 26 ingredients had been used. This decision is completely incomprehensible to anyone who doesn’t eat large quantities of cheese because, as we all know, copyright protects a range of things (all of which must be original and in a material form) that includes written works, musical works and artistic works, but certainly not fragrant works. And that indeed is what the French court held in the recent case of Lancôme v Modefine, the one that stirred up the debate – the court said that copyright does not protect fragrances because it only protects creations that have a concrete form, are identifiable, and have sufficient distinctive character so that they can be communicated. So, copyright law can pretty much be discounted.

Which leaves us with patents. The MIP article suggests that patent protection may be an option in cases where a fragrance is really new and really does involve an inventive step. I’m not aware of any fragrance patents in South Africa, although I do understand that there are some US patents for what are known as ‘smell molecules'. The MIP article suggests that perfume houses would be loath to file patents as this would require them to disclose the compositions of their fragrances, something that would leave them open to‘reverse-engineering’ of the compositions and, of course, ordinary copying after the expiry of the 20-year term.

All of which explains why perfume houses are agitating for a specific form of IP protection.

GAELYN SCOTT: Head of & Director in ENSafrica’s IP Department ([email protected])