Generic perfume for other usages

[ivanvdw]

Please excuse my ignorance if i am doing this all wrong but i have a question that i hope someone in the community can help with.

So these days it is very easy to get ones hands on generic (inspired by) perfumes that have been created to smell like the original. Everyone selling these products then call their perfume something different but states that it is inspired by the original. Is this for legal reasons or to tell people that their product smells like the original?

I want to make ( and then advertise and sell ) candles that make use of these generic perfumes,as there is a specific scent i love, but i dont want any affiliation to these products. I guess what i am asking is that if i make a candle made with perfume oil inspired by Armani Code do i have to say that it is inspired by Armani Code or can i just call it completely different as in "Nights Whisper" or whatever ?

[AndyJ]

hi ivanvdw,

Let's start off by making it clear which intellectual property rights (in the UK at least) are involved here. Although some people have argued that smells (including perfumes) should be eligible for copyright protection as artistic works, generally speaking* the courts have strongly resisted this. Patents and design right also don't apply to the intangible dimension of smell. That leaves trade marks and trade secrets. The latter can certainly apply to the formulation of perfumes, but they don't really have anything to do with the question here.

Perfumes can be registered as trade marks. This was the decision of the Court of Justice of the European Union in a case known as Sieckmann v Deutches Patent und Markernamt in 2003. However there remains the same problem as with copyright of how, when registering the fragrance as a mark, it should be represented. Herr Sieckmann provided both a chemical formula of the olfactory mark and a written description ("balsamically fruity with a slight hint of cinnamon"). There is also the second problem that, in order to remain valid, a trade mark must be used continuously without a gap of more than 5 years, in the course of trade. How can you prove that your smell mark has been used in this way? With some high end fragrances this has been done by impregnating the pages of fashion magazines with perfume alongside a printed advertisement. Other examples include testimony from perfume counter sales staff that they wafted or sprayed the relevant perfume in the air to entice customers to buy that particular product. However it remains the case that the registration of olfactory marks is fairly rare. The UK's Intellectual Property Office does not even acknowledge that it can be done in their online registration process.

So having established that a fragrance can be registered as a trade mark, how does that affect the sale of generic fragrances which smell somewhat similar to the trade mark? Given that the perfume industry is a multi-billion pound business which regularly has to deal with counterfeit products, as you may imagine, the companies involved are active in the courts to protect their brands. The most significant recent decision on the subject is another one from the CJEU, known as L'Oréal v Bellure. in which it was found that 'smell-alike' perfumes could amount to trade mark infringement and that references in advertising and the labelling of products as being inspired by another product contravened Article 3a (1)(h) of the Trade Marks Directive 84/450 which says:

Article 3.

Comparative advertising shall, as far as the comparison is concerned, be permitted when the following conditions are met:

(a) it is not misleading according to Articles 2(2), 3 and 7(1);

…

(d) it does not create confusion in the market place between the advertiser and a competitor or between the advertiser’s trade marks, trade names, other distinguishing marks, goods or services and those of a competitor;

(e) it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor;

…

(g) it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products;

(h) it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name.

On that basis I would avoid using terms like 'inspired by' when advertising your candles.






* In an exceptional case (Kecofa v Lancôme), in 2006 the Dutch Supreme Court decided that copyright could protect a fragrance, although to date no-one has found a way of describing how a fragrance can be recorded in a material form. In a separate case (known as Levola Hengelo) in 2018 the Court of Justice of the European Union (CJEU) decided that the taste of a food product cannot be protected by copyright. As taste and smell are closely related and perceived by the same olfactory organs in humans, this judgment is regarded as the final word of both taste and smell when it comes to copyright.

[ivanvdw]

Hi AndyJ,

Thank you so much for your reply.

In the case of making a different product with these generic oils, can i just make the product( it looks nothing alike, has a completely different name and is now a candle where it used to be a perfume) and sell them without crediting or anything. i dont even want to mention the original company. is this allowed ?

[AndyJ]

Hi again ivanvdw,

Yes, I can't see that causing you any problems as there would be nothing to attract the attention of the perfume manufacturers to your products in the first place.

[ivanvdw]

AndyJ,

That is good to hear.

Again, thank you so much .