Beauty experts will be well aware of the rise of fragrance dupes, which continue to disrupt the industry. These products are often marketed as 'inspired by' leading perfume brands and typically have a strong social media presence and following. The products are not counterfeits as such - they don't pretend to be the original in terms of brand name, packaging etc. They are effectively imitation fragrances, usually marketed at a fraction of the price of the original.
The consumer appeal of lower-priced alternatives is obvious - and with fragrance, as with other beauty dupes, it is easier for the consumer to portray the product as an original than it is with, say, a handbag which is on display (although arguably, due to the rise in 'dupe culture' fuelled by social media, the stigma surrounding dupes is fading anyway). However, for perfumeries who invest significantly in their expertise, artistic talent and branding (luxury fragrances can take many years to develop), the increasing proliferation of dupes is damaging to their businesses and brands, arguably exploiting their investment and creative invention.
We explored beauty dupes and IP protection generally in a previous edition - here we consider the IP rights that could specifically be enforced against perfume dupes in the UK.
Protecting the fragrance
Perfume brands have a suite of unregistered and registered IP rights which can protect their brand name, get-up and packaging (labels, bottle shape etc.) - particularly trade marks, designs, copyright and passing off. However, when it comes to protecting the fragrance itself, the available options are more limited.
Patent protection is available for beauty formulations, technology and processes - but it requires a degree of technical innovation. While patent law may conceivably protect a process for extracting a fragrance, or for making it last longer, the inventiveness in creating a scent profile is arguably more creative than technical. Patent protection is therefore unlikely to be available for a fragrance formulation itself where no technical advantage can be ascribed to the formulation. Even if it were, filing a patent would likely entail making the recipe public, inherent to the patent application process is publication - a key element of the 'patent bargain’, in which case anyone could freely replicate the formulation once any resultant patent had expired (maximum 20 years), or even earlier if the patent application is not granted. This is significant when you consider the longstanding appeal of iconic fragrances such as Chanel No. 5, which was released in 1921.
The creative artistry in upmarket scent creation leads us to consider copyright. While the function of copyright is to protect creative works, the law has not developed with something as intangible as scent in mind. In 2006 the Dutch High Court held that a Lancôme fragrance did qualify for copyright protection, but this decision is an outlier and more recently the European Court of Justice (ECJ) decided that the taste of a food product cannot enjoy copyright protection because of its subjectivity and because it does not meet the requirement for an 'expression' of intellectual creation. While taste and scent are not synonymous, in practice it would be difficult to argue around this judgment in favour of copyright protection for a fragrance, unless the UK departs from EU case law. In any event, in the UK, we currently have a "closed list" of protectable works, and fitting a fragrance into any of the relevant categories, e.g., as a work of artistic craftsmanship, is likely to be a stretch.
Certain scents may arguably act as indicators of trade origin similarly to other so-called "non-traditional" trade marks such as shapes, colours or sounds. Indeed, a small number of smell marks have been registered - in 1999, "the smell of fresh cut grass" was registered as an EU trade mark (EUTM) for tennis balls. However, in its 2002 Sieckmann decision the ECJ upheld the rejection of an application to register a scent as a trade mark for various services. The application was supported by a chemical formula, an odour sample and a written description ("balsamically fruity with a slight hint of cinnamon"). The court held that, while scents are registrable as trade marks in principle, the requirements in place at that time for graphic representation of a trade mark were not satisfied by these three elements, or by any combination of them - the scope of protection was not sufficiently clear and precise. This approach has been confirmed in two further EUTM refusals, including an application for "the smell of ripe strawberries" for toiletries, clothing and other goods; no scents have been successfully registered as UK or EU trade marks since.
While the graphic representation requirement has since been removed from the legislation, trade marks must still be capable of being represented on the trade mark register in a manner that is clear and precise (and consistent with the seven registrability criteria set out in Sieckmann). In the short to medium term, it is doubtful that these difficulties could be overcome, and the UKIPO Trade Marks Manual states that: "in practice it is going to be difficult to represent such [olfactory] marks in an acceptable format". Longer term, it will be interesting to see whether digital scent technology could make this possible.
In summary, there may be limited protection to the underlying fragrance formulation. This means that there is nothing unlawful in third parties seeking to reverse-engineer a formulation in order to produce a similar product, and many dupe brands are using gas chromatography-mass spectrometry (GCMS) technology in order to do so.
One caveat is where the person or entity reverse-engineering the product is someone with knowledge of relevant confidential information (e.g. an ex-employee or ex-manufacturer). If their particular insight is based on confidential information, then the process of reverse-engineering the product could amount to a breach of confidence, particularly if it would have involved a significant amount of work to do so and their knowledge of the work required was based on confidential information or trade secrets.
Preventing "dupe" marketing
The protection available to fragrance formulations may suggest a lacuna in IP rights, but other forms of redress may be available. In particular, to market perfume dupes successfully, it is usually necessary to refer to the original brand and/or product name, which opens up questions of trade mark infringement and illegitimate comparative advertising.
These issues were considered some time ago in L'Oréal v Bellure (2009), in which the defendant produced imitation fragrances and distributed them to retailers with a list referencing the imitated L'Oréal fragrance names, which were trade marks with a reputation.
The ECJ held that an unfair advantage amounting to trade mark infringement would be taken where a defendant seeks to ride on the coat-tails of an earlier trade mark with reputation in order to benefit from the power of attraction, reputation and prestige of that mark, and to exploit the marketing effort expended by the proprietor without financial compensation. In applying the ECJ's judgment, the Court of Appeal (somewhat reluctantly) found that L'Oréal's trade marks had been infringed by the inclusion of the brand names in the product lists.
The product lists were found to constitute comparative advertising, which was also therefore considered. Under comparative advertising laws, the use of a competitor's trade mark is unlawful if it is misleading, takes unfair advantage of a trade mark with reputation, and/or presents goods or services as imitations or replicas of those protected by a trade mark. The court held that these conditions apply even if consumers are not deceived as to origin, and that (truthfully) saying that the defendant's product smelt like the product sold under the well-known trade mark amounted to unlawful advertising.
This decision has been widely seen as a controversial expansion of trade mark rights and an encroachment on competition and even free speech. Yet perhaps these concerns are now less valid, given the current proliferation of fragrance dupes.
Modern fragrance dupe brands appear to seek to circumvent legal action by using language such as 'inspired by' and taking a cautious approach to marketing their products. Many don't actually market themselves as 'dupes', and instead rely on customer reviews and social media commentary to make their imitation fragrance claims. Even so, many dupe brands do appear to walk a fine tightrope, and it would be interesting to see how courts might interpret the 'inspired by' language.
For the best prospects of success, it is important that not only brand names (e.g. Le Labo) but also individual product names (e.g. Santal 33) are registered as trade marks, and evidence of reputation is well documented.