Like a rose, a perfume by any other name should smell as sweet. But following a Dutch court ruling in July 2004, selling a cheap imitation under another name now constitutes a copyright violation. David Bainbridge looks at the different ways a smell can be protected, and asks what copyright protection can offer a scent that taking out a trademark or a patent currently cannot.

Scents have traditionally lingered in the grey area of intellectual property law, their production secrets guarded under lock and key rather than legally protected, but a ruling by the Dutch Court of Appeals in July 2004 looks set to change all that. By granting Frenchbased Lancôme a copyright on its perfume Trésor, it has opened the door on a debate which is dividing the IP industry: should smells be protected and, if so, by which type of legislation?

The Lancôme victory hinged on one main argument: its perfume Trésor was created thanks to author expertise and judgement, and as a result, was comparable to a creative composition of literature or art. The Dutch Court of Appeals agreed, finding the scent to be a distinct combination of ingredients ‘not only measurable by the senses but also, in the court’s judgement, concrete and stable enough to be considered an “authored work” as intended in copyright law’.

The claim isn’t as far-fetched as it may first sound. As Charles Gielen of law firm NautaDutilh which represented Lancôme showed, Trésor is produced via a sophisticated design process of 26 specifically chosen components. In copying 24 of these (and by not claiming to have done anything but imitate the scent), Female Treasure by the small Dutch maker of cut-price perfumes, Kecofa, was found to have infringed Lancôme’s copyright and the company forced to reimburse loss of earning.

Trading on a smell
Up until the Dutch Court ruling, manufacturers were offered little support for the protection of their perfumes. Trademark law could protect the name or design of the product, but the fragrance itself remained a far more difficult concept to bottle. Some countries, such as China, even go so far as to prohibit the registration of scents in their trademark legislation; while even countries that accept the validity of ‘olfactory marks’ (trademarks specific to smells), such as the US and the UK, seem yet to completely overcome the complexities of such applications.

The difficulty rests on a simple requirement of trademark registration; in order to register a mark, it must be capable of graphic representation if it is to be comparable enough to prosecute against infringement. Therein lies the problem: how exactly do you graphically recreate a smell well enough to trademark and protect it?

Applicants have tried a variety of means to represent the scent they wish to safeguard. By far the most popular method is to describe the smell in words. It was in this manner that the very first olfactory mark – a sewing thread and embroidery yarn with the scent of ‘a high impact, fresh floral fragrance reminiscent of Plumeria blossoms’ – was registered in the US in 1990. It was later cancelled in 1997 for failing to file an Affidavit of Use.

Two similar applications were successful in the UK: the first for ‘a floral fragrance/smell reminiscent of roses as applied to tyres’, and the second for ‘the strong smell of bitter beer applied to flights for darts’. A Community olfactory mark was also registered in the EU as ‘the smell of fresh cut grass’ for use with tennis balls, but, more often than not, such applications fail.

The example of Ralph Sieckmann’s application to the German Patent Office (to trademark ‘the smell, aroma or essence of cinnamon’ to be used with furniture) goes some way to illustrate why. He attempted to register his mark by submitting the findings of a gas chromatograph (the equipment that separates vapour into its individual components) and by using ‘electronic nose’ technology (a method that provides a visual image of an odour) to indicate the smell graphically. Such representation looked infallible on paper, yet his appeal was refused. When questioned as to why, the European Court of Justice ruled that although a trademark could be granted to something that is not visible providing it can be represented graphically ‘by means of images, lines or characters’, this requirement was not necessary satisfied by a chemical formula, by a description in written words, by a scent sample or by a combination of all these elements. In other words, there exists no acknowledged method of graphically representing a smell in trademark terms. With such ambiguity, it comes as no surprise to find trademark protection patchy to say the least.

...if a vineyard is able to patent the ‘nose’ of its wine, how soon will it be before applicants attempt to patent the flavour of a brew of tea, or the crunch of a specific brand of biscuits?

Is there a patent alternative?
For many, taking out a patent would be a more appropriate way to protect perfume (not least because patents grant exclusive rights for 20 years, compared with the right against copying given by a copyright, which can last for well over 70 years). But patenting a scent is itself fraught with difficulty.

Patent law enables the chemical composition of a perfume to be protected as an ‘invention’, but the reality of determining the novelty of a smell is about as difficult as the challenge of graphically representing it. After all, how can a chocolate manufacturer apply for a patent for its chocolate flavouring when the taste and smell of chocolate have been employed for centuries? Will cheese producers patenting the ‘aroma’ of their traditional blue find themselves running up against other producers whose aroma is considered an innovative improvement of the original? And, if a vineyard is able to patent the ‘nose’ of its wine, how soon will it be before applicants attempt to patent the flavour of a brew of tea, the crunch of a specific brand of biscuits, or the sensation of pressing a particular button on a particular remote control?

Of those patents for scented products which have been granted, all rest upon the novelty of the product with the smell recorded almost as an afterthought. In September 2004, for example, the UK Patent Office approved the application of a ‘scent emitting alarm clock’, but the smell had little to do with the patent granted; it was instead the technology that emitted the smell that the patent promised to protect.

Is copyrighting the answer?
Although patents can in theory protect the chemical composition of a ‘novel’ smell, they are not able to safeguard the ingredients of a scent already in existence – which, by its very prior existence, cannot be considered an innovation in patent terms. This is where copyright law has both its advantages and disadvantages. In awarding copyright to Trésor, the Dutch Court focused on the recipe (and proof of design), rather than the smell itself. As such, any manufacturer who is able to prove the development and individual recipe of its marketed smell (both new and old) has a chance of being awarded its copyright. The benefits of such a system, however, fall short when you consider the complexities involved in maintaining the value of the copyright. For any prosecution against infringement to hold up in court, there must, therefore, be some proof that the defendant copied (directly or indirectly) the recipe and production method of the smell. Any producer who can substantiate independent creation of the same scent could escape infringement in a way that would be impossible were the scent trademarked or patented.

Advances in smell technology, however, look set to plug the gap. By scientifically describing how odour-sensing proteins in the nose translate specific tastes and smells into information in the brain (for which he was awarded a Nobel Prize in October 2004), futurist Thomas Frey from the DaVinci Institute has wafted the door for taste and smell patents ajar. Now with a potential method for manufacturers to represent the smell and taste of their products, the patent and trademark world may soon be forced to follow the scent of change. Until this new technology comes into play, however, the best any perfume manufacturer aiming to shield its IPR from the noses of cut-price imitators can hope for, is copyright protection.

David Bainbridge is Professor of Business Law at Aston Business School in the UK and editor in chief of the Intellectual Property Law Reports. Charles Gielen of NautaDutilh was awarded Best Contribution to Copyright Practice 2004 for his work on the Lancôme case at the World Leaders European IP Awards 2004

This article first appeared in IP Review, issue 9

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