Can one have exclusive right to a scent?
The original, unique, scent is one of the most important features of luxury perfumes and its composition is usually a closely guarded secret. Paradoxically, however, granting legal protection to a scent is extremely difficult. Indeed, this issue has not been resolved in the decisions of the Polish Patent Office or Polish common courts.
Nonetheless, for a long time, the possibility of protecting a scent as a trademark has been the subject of decisions of the European Intellectual Property Office (EUIPO), EU courts as well as foreign courts.
Scent trademark – how to register it?
As defined in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark, an EU trademark:
− May consist of any signs, in particular words, including personal names or designs, letters, numerals, colours, the shape of goods or the packaging of goods, or sounds, provided that such signs are capable of:
− Distinguishing the goods or services offered by one undertaking from those of other undertakings; and
− Being represented in the Register of EU trademarks in a manner allowing the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
As we can see, this definition does not exclude the registration of a scent, although it requires that the trademark be displayable in the register. The previous Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark directly requested that a trademark consist of a designation that can be represented graphically.
The interpretation of this condition by EUIPO has varied from one decision to the next. In the best known and so far only affirmative decision concerning the registration of a scent (Vennootschap onder Firma Senta Aromatic Marketing vs. Markgraaf B.V., reference number R 156 / 1998-2), the Office decided to register the “scent of freshly cut grass” for tennis balls. In its justification, the Board of Appeal indicated that the graphic representation may consist in a description of the scent which is distinguishable, recognizable and which everyone knows on the basis of experience. Thus, the Board considered it sufficient to specify that the mark consists of the scent of freshly cut grass applied to the product, i.e. tennis balls. EUIPO registered the mark under number EUTM-000428870, but after the expiration of the 10-year protection period the owner did not extend it.
In the Ralf Sieckmann vs. Deutsches Patent- und Markenamt case (C-273/00), the Court of Justice of the European Union confirmed that a trademark may consist of a designation which, by its very nature, is not visually discernible, but only under certain strictly defined conditions. The case concerned proceedings taking place before the German Patent Office for registration of a scent trademark in the form of a chemical substance known as 3-phenylacrylic acid methyl ester having the formula C6H5-CH = CHCOOCH3. The applicant, apart from the chemical formula, also presented the German Patent Office with a sample of the scent and pointed out that it is described as balsamic and fruity with a slight hint of cinnamon. The German court examining the matter asked the CJEU whether the phrase “a designation which can be represented graphically” included only those designations which could be presented directly in a visible form, or should the phrase be interpreted to refer to designations such as scent or sound, which cannot be perceived with the sense of sight, but can be expressed indirectly using auxiliary methods. The Court also asked the CJEU – in the event the latter adopted the second, broader, interpretation – whether the requirement of a graphic representation would be met if the scent was reproduced in the form of a chemical formula, published description, deposit or combination of these methods.
The CJEU decided that a graphic representation may consist of a description of the trademark by means of images, lines or characters, provided that such representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Referring these criteria to scent marks, the court ruled out the use of the chemical formula of a scent as not allowing its direct identification. It also pointed out that the chemical formula of a substance is not identical to its scent and, as such, is not sufficiently clear and precise. For similar reasons (lack of clarity, precision and objectivity) it also rejected the possibility of using a verbal description. The court also considered that submission of a scent sample as evidence was not an admissible graphic representation and noted that such samples are not sufficiently stable or durable. In conclusion, the court decided that also the combination of the above elements did not allow the recognition of the scent as having been presented graphically in accordance with the requirements of the law.
Similar arguments were put forward by the court of first instance in the judgment issued in the Eden SARL vs. EUIPO case (T-305/04), in which the applicant claimed registration of “the scent of ripe strawberries” described verbally and graphically by a drawing of a strawberry:
In the opinion of the court, the term “’scent of ripe strawberries” is not sufficiently precise and objective because there may be different scents that meet this criterion. The strawberry drawing itself represents the fruit and not the scent to be registered as a trademark.
Such formulation of the requirements for scent marks made it practically impossible to register them as trademarks. Indeed, it is difficult to point to other methods of graphically representing a mark that is fleeting by nature and is not perceived by the sense of sight than those considered in the abovementioned judgments.
Guided by this argument, EUIPO refused, for example, to register the scent of tea tree oil for industrial safety gloves (case R-012741401). It pointed out that the verbal description of the mark does not constitute its sufficient graphic representation because it is not sufficiently clear, precise and objective.
In view of this, the applicants sought other forms that could represent the scent mark. One of them made reference to a colour matrix of the spectrum of scents, i.e. the method used in the perfume industry to present a given fragrance. The French Institute for the Protection of Fragrances (Institut Pour la Protection des Fragrances) applied for registration of a scent containing a note of grass, fruit of a citrus tree (bergamot, lemon), flower (orange blossom, hyacinth) as well as rose and musk, for use in cosmetics, pharmaceuticals, paper products, bags and household textiles (bedding, towels and tablecloths) (case R 186 / 2000-4). The mark was to be represented using the color matrix shown below.
EUIPO refused to register the mark indicating that the proposed graphic representation is not understandable to the public concerned because it does not allow the determination of the subject or scope of protection. The colour matrix used in the perfume industry is not legible outside that industry and is not perceived as a code serving to record the scent. It also does not contain any guidelines that would make it possible to decipher the scent’s graphic record.
The new regulation regarding the EU trademark (2017/1001) abolished the requirement of graphic representation of the mark but did not eliminate the fundamental problem mentioned in the discussed decisions and judgments – how to present a scent in an unambiguous and precise way? Perhaps the solution to this dilemma will come with the development of technology rather than law.
Can a scent be considered a “work”?
In view of the difficulty in registering a scent as a trademark, a different method of granting protection may be to classify it as a “work” within the meaning of copyright law. It seems that the broad definition of a work contained in legislative acts does not a priori exclude such interpretation. The Polish Act on Copyright and Related Rights of 4 February 1994 indicates that the subject of copyright is any manifestation of creative activity of an individual nature, established in any form, regardless of the value, purpose or manner of expression. A similar definition is granted to a “work” in the legislation of other European countries. For example, the provisions of the French Code of Intellectual Property (Code de la propriété intellectuelle) protect copyrights to all products of the intellect, regardless of their type, form of expression, matter and purpose.
However, also in this area, despite similar definitions of a “work”, there is no uniform judicial practice of the European courts regarding the classification of scents. For example, the case-law of the French Cour de Cassation consistently refuses to grant copyright protection to scents, whereas such protection is allowed by the Supreme Court of the Kingdom of the Netherlands (Hoge Raad der Nederlanden).
In the judgment of 10 December 2013, ref. no 11-19872, the French Cour de Cassation upheld the already established case-law, according to which scent is a result of the application of specialist knowledge (know-how, French: savoir-faire) and not an outcome of creative activity and, as such, it is not a form of expression benefiting from protection as a work. In the aforementioned ruling, in response to the allegation that the court of appeal had adopted this thesis a priori, without examining the originality of the perfume (i.e. its author’s creative contribution), the Cour de Cassation elaborated on its position. It pointed out that copyright protection applied to works in the form received by the senses, if such works could be recognized precisely enough to be passed on to recipients. In the court’s opinion, the scent of perfume considered outside the manufacturing process (which in itself is not a creative activity) does not meet this requirement.
A different position in a similar case was expressed by the Supreme Court of the Kingdom of the Netherlands in the judgment of 16 June 2006 in the case of Kecofa vs. Lancôme. This court recognized that copyright protection extends beyond works perceived by means of sight or hearing to include any sense, provided that the given work meets the criterion of originality. In the court’s opinion, the scent of perfume is a subject of copyright separate from the scent of its carrier (i.e. a fluid with specific chemical composition). Consequently, the reproduction of a scent may constitute a violation of copyright, even if the exact chemical formula of the fluid is not exactly reproduced and the same scent effect is produced as a result of the creation of a different formula.
Other ways to protect perfumes
So far, Polish courts have not been required to indicate which legal provisions are appropriate to the protection of scents. It seems that, until solid jurisprudence is established on this issue, the surest way – along with the protection of the perfume formula as a trade secret – is to continue protecting the name and the external form of the product or its packaging based on the provisions of industrial property law and the principles of fair competition, rather than the protection of the scent formula alone.
This solution – although it does not protect the essence of perfume as a product – nonetheless allows an effective protection of the product’s position on the market and the expenditures involved in its development and preservation. A new and original scent can be created, an existing scent can be forged, but the hardest thing is to persuade the consumer to reach for it. In addition to the high quality of the product, a well-known and respected trademark is one of the best guarantees that our product will be chosen by consumers and appreciated on the market.
Joanna Woźniak, adwokat, Intellectual Property practice, Wardyński & Partners
