As creative product par excellence, the perfume is the result of a sensory research and combination of elements that give life to a unique “formula”, and as such requires legal protection. The legal order offers multiple tools to protect this type of creation and the problem lies is to find the most appropriate instrument for the specific case.
The patent is one of the least effective means of protection and, while it is the most powerful tool offered by intellectual property to protect new, original and useful inventions, it obliges the proprietor of the patent to disclose, at the time of registration, information on the composition and use of the product, for the best interest of consumer, which become public knowledge once the time limit expires due to an exclusivity for a certain period of time on production and sale phase.
However, an invention must be useful to be patentable and fragrances rather than utilities are an element of pure“luxury” like jewellery products; in fact the few patents registered are based on the useful capacity of the product to supplant harmful odours or to promote physical and mental health.
Consequently, the effectiveness of this discipline is doubtful in a context in which perfumes are used for a pure aesthetic purpose.
Copyright protection is easier than patent protection because it is granted automatically once the originality of the work has been demonstrated, eliminating the relevant registration costs. Its protection is also more durable, according to legal systems, from 50-70 years after the death of its author.
Over the years, jurisprudence rulings have not been reassuring, e.g. in Bsiri-Barbir against Haarman & Reimer, the French Supreme Court has established that perfumes “are not eligible for protection under French copyright law because they are a product of the application of purely technical knowledge and lack, therefore a discernable association with the individual personalities of their creators”.
For the Court of Bsiri-Barbir, perfumers work as artisans, not as artists, so the judges therefore considered that perfume does not deserve copyright protection because the creativity behind it does not reach the level necessary to be considered “art”. This position has been confirmed, also by the French judges, in the case beaute Prestige Int’M v. senteur mazal, concerning the alleged copyright infringement on the perfume Jean Paul Gaultier’s Le Male.
On the same line, in the lancôme-Modefine case, the Court held that copyright does not protect fragrances, because only creations with a concrete and sufficiently distinctive form are protected.
The main problem is that copyright protects an artistic creation, and that in perfume is just the fragrance.
However, since it is a question of comparing two fragrances and not two formulas, two problems arise: one relating to the ephemeral character of perfumes, and than the difficulty of producing a technically objective description of the fragrance.
On the contrary, some judges recognized fragrances as artistic creation as an expression of the personality of its author. In the case of Mugler, the Paris Tribunal de Commerce agreed with mugler’s statement that “Angel” is a copyrighted work, associating the creation of a fragrance with the composition of a musical score, as the fruit of creativity.
On the heels to the Mugler decision, the Cour d’appel de Paris in January 2006 stated that various perfumes of l’Oreal, Prestige, parfums Cacharel, Ralph Lauren parfums and Guy Laroche parfums could enjoy the protection deriving from copyright, as originals. At the same time, Lancôme initiated a copyright infringement action against the Dutch perfume vendor Kecofa in the Netherlands, as the latter’s female Treasure contained 24 of the 26 ingredients present in the Tresor Lancome. The Court concluded that, since the liquid met the fixation requirement and the fragrance constituted a creative composition, protection of the copyright could be granted.
Over the last decade, the protection of perfumes by trademarks has evolved considerably with the creation of so-called atypical brands, which include olfactory signs.
However, most foreign jurisdictions have hindered the registrability of perfumes as trademarks, due to the lack of the requirement of graphic representation of the olfactory product, pursuant to the article 4 of the Regulation on Community trade marks abolished by Directive 2015/2456 of the European Parliament and of the Council from 1 October 2017.
In fact, even after the abolition of the graphical representation criterion, the requirement of representation remains a constant even in the new Regulation, requiring that to be suitable it must have the characteristics of clarity, precision, durability and objectivity. An olfactory mark will always have an element of subjectivity. Therefore it is unlikely that there will be particular revolutions regarding its eligibility in the future.
Contractual instruments means
Given the complexity of the application of intellectual property rights to the perfume industry, large companies decide to use contractual protection to maintain exclusivity in the market, using so-called confidentiality or confidentiality clauses.
The confidentiality clause consists of a legal transation of a synllagmatic nature, through which the parties contract the information they intend to keep confidential, committing themselves not to disclose it to third parties, on pain of breach of the agreement.
Behind the production of perfumes there is, in fact, an immense network of contracts between suppliers and producers that bind the latter to secrecy about the quantity and price of flowers supplied to the industry, eg. the fashion house Chanel, which has concluded such an exclusive agreement with the Mul family, for centuries producer of jasmine.
The Directive of the European Parliament and of the Council of 8 June 2016 on the protection of confidential know-how and business information defines business secrecy as “set of information which meets the following requirements:
- secret in the sense that they are not, in their entirety or in the precise configuration and combination of their elements, generally known or easily accessible to persons who normally deal with the type of information in question
- have commercial value as secret
- have been subjected to reasonable measures, in accordance with the circumstances, by the person to whose legitimate control they are subject, to keeping them secret”
The advantage of this form of protection is that there is no need for registration (thus eliminating the relevant costs) and secrecy is guaranteed as long as it remains so, so that in case of breach the protection will go through the compensation for breach of contract.