Protection of Fragrances

Patent Protection

Fragrances are eligible for patent application. Nevertheless, this is not the most appropriate way of protecting fragrances from a practical point of view and is very rarely used within the perfume industry.

On one hand, to be patentable, an invention should be new, not obvious, and suitable for an industrial application. The novelty criterion is not an issue since it only prevents the patentability of smells that already pre-exist in nature. It would not prevent the patentability of fragrances that result from a combination of different components and smells. The industrial application of fragrances is also indisputable, as is proven by the success of the perfume industry. On the contrary, the criterion of obviousness is more questionable and it may be difficult for the applicant to demonstrate whether there was a real inventive step in thinking to combine different components.

In addition, the protection afforded by patents is not suitable for fragrances. First, it is limited to 20 years, whereas it is quite common for successful perfumes to be exploited for many more years, such as Chanel's No 5 or Guerlain's SHALIMAR, which have been on the market since 1921 and 1925 respectively. In addition, filing a patent application implies that the formula of the fragrance is disclosed, thus making it easy for competitors to obtain an identical or very similar fragrance by using another molecule mimicking the fragrance formula, subject nevertheless to a possible application of the theory of equivalence.

Trademark Protection

One may also consider protecting fragrances via trademark protection. Of course, this method of protection is only possible in countries where olfactory signs are eligible for trademark registration, which is not the case in Japan, for instance.

On the contrary, in the United States, the 'fragrance reminiscent of Plumeria blossoms' was registered as a trademark for sewing thread and embroidery yarn. In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990). Indeed, the Trademark Trial and Appeal Board ('TTAB') held that a smell could be registered as a trademark on the grounds that 'fragrance is not an inherent attribute or natural characteristic of applicant's goods, but is rather a feature applied by applicant,' and therefore that the distinctiveness of the trademark was such that the scent would not be functional.

In addition, even though it is possible to file a smell as a trademark, one may encounter practical difficulties in view of identifying the fragrance in the application process.

In this regard, the European Court of Justice's decision of Dec. 12, 2002 (C-273/00 Ralf Sieckmann v. Deutsches Patent- und Markenamt) has made impossible, from a practical point of view, the filing of an olfactory sign in Europe. Indeed, in its decision the ECJ ruled on the one hand that a trademark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective. But on the other hand, that in respect of an olfactory sign, the requirements of graphic representation are not satisfied by a chemical formula, by a description in written words, by the deposit of an odor sample, or by a combination of those elements. As a consequence, the ECJ ruled in the same time that all ways commonly used in view of identifying olfactory signs in European countries in which they were registered as trademarks were not sufficient in view of identifying the fragrances.

Lastly, it is also seriously disputable to assume that a fragrance applied for registration may be distinctive to designate perfumes. Indeed, as expressly provided by the TTAB, the In re Clarke decision does not apply to 'scents of products noted for [their olfactory] features, such as perfumes, colognes or scented household products.'

Copyright Protection

The question of the eligibility of fragrances for copyright protection is also disputable and has given place to contradictory decisions in Europe, particularly in The Netherlands and France.

The Dutch Supreme Court ruled on June 16, 2006 (Lanc'me Parfums et Beaut' et Cie SNC v. Kecofa BV) that perfumes are eligible for copyright protection as far as the fragrance is susceptible to human perception, has an original character, and bears the personal mark of its maker. As a general rule, no copyright protection can be obtained for those elements in a work that are necessary to obtain a technical effect under Dutch copyright law, but the Supreme Court ruled that fragrances do not exclusively consist of those elements.

In France, courts have traditionally considered that fragrances should not be protected under copyright, the main reason being that they are not 'works of art' within the meaning of Article L. 112-1 of the French Intellectual Property Code, but rather the result of a technique or know-how. A new trend has appeared recently, and lower courts (Courts of First Instance and Courts of Appeal) have started to consider that fragrances are 'works of art' within the meaning of the Intellectual Property Code and, as such, are eligible for protection under copyright law provided the disputed fragrance is original (for instance Paris Court of Appeal Jan. 25, 2006, Bellure v. L'Or'al & Lanc'me Parfums et Beaut' Cie). Their reasoning is based on the fact that copyright protection is not expressly prohibited by law because the list of 'works of art' in Article L. 112-1 of the French Intellectual Property Code is not exhaustive.

However, the French Supreme Court, enforcing the traditional views of French copyright law, overruled these decisions on June 13, 2006 (Bsiri-Barbir v. Haarmann & Reimer) and held that fragrances are not eligible for copyright protection. The French Supreme Court stated that fragrances only consist of the implementation of know-how and therefore cannot be considered as being protectable forms of expression. This decision, which clearly goes against the aforementioned previous decisions, was criticized not only by the perfume industry but also by authors and by lower court judges, who continue to rule that fragrances are eligible for copyright protection in spite of the ruling of the French Supreme Court (for instance Paris Court of Appeal Feb. 14, 2007, Beaut' Prestige Internationale v. Senteur Mazal).

In the United States, fragrances would not be eligible for copyright protection. Indeed, in order to be protected under U.S. copyright law (U.S. Copyright Act, 17 USC '102), a work must be original and fixed in a 'tangible medium of expression.' In the case of fragrances, the latter requirement is not met, since fragrances are not 'fixed' in a tangible medium of expression.

It also seems difficult for fragrances to be protected under copyright law in Japan. Although fragrances may be understood to be 'works of art,' Japanese copyright law does not give protection to 'works of applied art.' Perfumes, which will be sold in large quantities, will not be eligible for protection under copyright because they are 'works of applied art.'

Conclusion

It seems that intellectual property rights are generally not appropriate for protecting fragrances and that in the absence of a specific protection designated for fragrances, the perfume industry has to rely upon know-how and unfair competition rules to prevent copies. It is also necessary to bear in mind that today's technical means make it easier to analyze the compounds of fragrances, and so it is therefore less and less necessary to rely upon a fraudulent misappropriation of the fragrance's formula in order to reproduce it.

Olivier Banchereau is a member of the Paris Bar and counsel within Lovells Paris Intellectual Property Media and Technology department. He has significant experience in all fields of intellectual property law, but now mainly deals with patent and trademark matters and anti-counterfeit cases. He may be contacted at [email protected]. The author acknowledges the assistance of Mark Halligan (Lovells Chicago), Karin Verzijden (Lovells Amsterdam), and Eiichiro Kubota (Kubota, Hirai & Kozu) in the preparation of this article.

The perfume industry is a wealthy and profitable one, generating an ever-increasing turnover worldwide. However, as do all successful industries, it attracts numerous counterfeiters and tempts indelicate competitors to copy successful perfumes. Although perfumes are expensive and sensitive products whose development requires time and sizeable investment, they are, unfortunately, hard to protect against unauthorized copies.

The protection of the name of a perfume and of the shape of its bottle is not problematic. Indeed, they are eligible for trademark and copyright (or design patent) protection without any particular difficulty. On the contrary, the protection of the fragrances themselves is more questionable and raises a lot of uncertainties, since intellectual property laws worldwide do not contain any specific provisions for the protection of fragrances. Consequently, it is necessary to rely upon the general provisions of the usual intellectual property rights (patent, trademark, copyright) in order to determine whether fragrances may be protected as such, or whether they may only be protected through the general rules of know-how and unfair competition.

A short overview of the protection of fragrances through patent, trademark, and copyright laws in the United States, Japan, and Europe illustrates how difficult it is to protect fragrances through the usual intellectual property rights.

Patent Protection

Fragrances are eligible for patent application. Nevertheless, this is not the most appropriate way of protecting fragrances from a practical point of view and is very rarely used within the perfume industry.

On one hand, to be patentable, an invention should be new, not obvious, and suitable for an industrial application. The novelty criterion is not an issue since it only prevents the patentability of smells that already pre-exist in nature. It would not prevent the patentability of fragrances that result from a combination of different components and smells. The industrial application of fragrances is also indisputable, as is proven by the success of the perfume industry. On the contrary, the criterion of obviousness is more questionable and it may be difficult for the applicant to demonstrate whether there was a real inventive step in thinking to combine different components.

In addition, the protection afforded by patents is not suitable for fragrances. First, it is limited to 20 years, whereas it is quite common for successful perfumes to be exploited for many more years, such as Chanel's No 5 or Guerlain's SHALIMAR, which have been on the market since 1921 and 1925 respectively. In addition, filing a patent application implies that the formula of the fragrance is disclosed, thus making it easy for competitors to obtain an identical or very similar fragrance by using another molecule mimicking the fragrance formula, subject nevertheless to a possible application of the theory of equivalence.

Trademark Protection

One may also consider protecting fragrances via trademark protection. Of course, this method of protection is only possible in countries where olfactory signs are eligible for trademark registration, which is not the case in Japan, for instance.

On the contrary, in the United States, the 'fragrance reminiscent of Plumeria blossoms' was registered as a trademark for sewing thread and embroidery yarn. In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990). Indeed, the Trademark Trial and Appeal Board ('TTAB') held that a smell could be registered as a trademark on the grounds that 'fragrance is not an inherent attribute or natural characteristic of applicant's goods, but is rather a feature applied by applicant,' and therefore that the distinctiveness of the trademark was such that the scent would not be functional.

In addition, even though it is possible to file a smell as a trademark, one may encounter practical difficulties in view of identifying the fragrance in the application process.

In this regard, the European Court of Justice's decision of Dec. 12, 2002 (C-273/00 Ralf Sieckmann v. Deutsches Patent- und Markenamt) has made impossible, from a practical point of view, the filing of an olfactory sign in Europe. Indeed, in its decision the ECJ ruled on the one hand that a trademark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective. But on the other hand, that in respect of an olfactory sign, the requirements of graphic representation are not satisfied by a chemical formula, by a description in written words, by the deposit of an odor sample, or by a combination of those elements. As a consequence, the ECJ ruled in the same time that all ways commonly used in view of identifying olfactory signs in European countries in which they were registered as trademarks were not sufficient in view of identifying the fragrances.

Lastly, it is also seriously disputable to assume that a fragrance applied for registration may be distinctive to designate perfumes. Indeed, as expressly provided by the TTAB, the In re Clarke decision does not apply to 'scents of products noted for [their olfactory] features, such as perfumes, colognes or scented household products.'

Copyright Protection

The question of the eligibility of fragrances for copyright protection is also disputable and has given place to contradictory decisions in Europe, particularly in The Netherlands and France.

The Dutch Supreme Court ruled on June 16, 2006 (Lanc'me Parfums et Beaut' et Cie SNC v. Kecofa BV) that perfumes are eligible for copyright protection as far as the fragrance is susceptible to human perception, has an original character, and bears the personal mark of its maker. As a general rule, no copyright protection can be obtained for those elements in a work that are necessary to obtain a technical effect under Dutch copyright law, but the Supreme Court ruled that fragrances do not exclusively consist of those elements.

In France, courts have traditionally considered that fragrances should not be protected under copyright, the main reason being that they are not 'works of art' within the meaning of Article L. 112-1 of the French Intellectual Property Code, but rather the result of a technique or know-how. A new trend has appeared recently, and lower courts (Courts of First Instance and Courts of Appeal) have started to consider that fragrances are 'works of art' within the meaning of the Intellectual Property Code and, as such, are eligible for protection under copyright law provided the disputed fragrance is original (for instance Paris Court of Appeal Jan. 25, 2006, Bellure v. L'Or'al & Lanc'me Parfums et Beaut' Cie). Their reasoning is based on the fact that copyright protection is not expressly prohibited by law because the list of 'works of art' in Article L. 112-1 of the French Intellectual Property Code is not exhaustive.

However, the French Supreme Court, enforcing the traditional views of French copyright law, overruled these decisions on June 13, 2006 (Bsiri-Barbir v. Haarmann & Reimer) and held that fragrances are not eligible for copyright protection. The French Supreme Court stated that fragrances only consist of the implementation of know-how and therefore cannot be considered as being protectable forms of expression. This decision, which clearly goes against the aforementioned previous decisions, was criticized not only by the perfume industry but also by authors and by lower court judges, who continue to rule that fragrances are eligible for copyright protection in spite of the ruling of the French Supreme Court (for instance Paris Court of Appeal Feb. 14, 2007, Beaut' Prestige Internationale v. Senteur Mazal).

In the United States, fragrances would not be eligible for copyright protection. Indeed, in order to be protected under U.S. copyright law (U.S. Copyright Act, 17 USC '102), a work must be original and fixed in a 'tangible medium of expression.' In the case of fragrances, the latter requirement is not met, since fragrances are not 'fixed' in a tangible medium of expression.

It also seems difficult for fragrances to be protected under copyright law in Japan. Although fragrances may be understood to be 'works of art,' Japanese copyright law does not give protection to 'works of applied art.' Perfumes, which will be sold in large quantities, will not be eligible for protection under copyright because they are 'works of applied art.'

Conclusion

It seems that intellectual property rights are generally not appropriate for protecting fragrances and that in the absence of a specific protection designated for fragrances, the perfume industry has to rely upon know-how and unfair competition rules to prevent copies. It is also necessary to bear in mind that today's technical means make it easier to analyze the compounds of fragrances, and so it is therefore less and less necessary to rely upon a fraudulent misappropriation of the fragrance's formula in order to reproduce it.

Olivier Banchereau is a member of the Paris Bar and counsel within Lovells Paris Intellectual Property Media and Technology department. He has significant experience in all fields of intellectual property law, but now mainly deals with patent and trademark matters and anti-counterfeit cases. He may be contacted at [email protected]. The author acknowledges the assistance of Mark Halligan (Lovells Chicago), Karin Verzijden (Lovells Amsterdam), and Eiichiro Kubota (Kubota, Hirai & Kozu) in the preparation of this article.