THE "SUNSET" OF OLFACTORY TRADEMARKS
2021 . 10 . 05 |
This article analyses the possibilities to register a certain fragrance as a trademark before the European Trademark Office (EUIPO).
Around the year 2000, some Authors indicated “the possibility” that a certain fragrance or smell could "play the role of" a trademark.
Many articles in IP journals followed and there were some case law decisions both in favour and against the granting of olfactory trademarks.
First of all, we have to say that an olfactory mark does not protect a commercial perfume on the market.
So if I create a certain fragrance and market a relevant perfume, I cannot obtain the monopoly of such fragrance by registering it as olfactory trademark.
Even today "clone" perfumes can be found on the street market imitating the fragrance of perfumes of famous brands.
The question therefore arose as to whether the "blend " for a new fragrance or a well-identified odour could be monopolised by a single entity. Case law answered in the negative.
Therefore, if today I faithfully reproduce the smell of a famous perfume and sell it under my own brand (quite distinct from the original one) I do not commit any illegal act.
But if I somehow "hook" my product to the famous perfume by indicating on the packaging, for example, "Similar to Acqua di Gio'", then we cross the border of illegality.
Therefore, the production and marketing of a "clone" fragrance is lawful if the original product and its brand are not mentioned in any way.
All these operations can be challenged mainly through the rules on unfair competition since, as already highlighted, there is no possibility of registering an olfactory trade mark and claiming a monopoly on a "fragrance marketed as a perfume".
We also point out, for the sake of being thorough, that in a French Court case l'Oreal obtained protection for a fragrance through the French copyright law but immediately afterwards in the case Bsiri-Barbir v. Haarmann & Reimer, the French supreme Court declared that the fragrance of a perfume "does not constitute a tangible form of expression" and therefore is not subject to copyright protection since perfumes are manufactured through the application of purely technical knowledge and cannot be considered an artistic work.
The function of a brand is to distinguish one product from another.
So if I am in front of a shelf in a supermarket and have 10 different packs of coffee, I can distinguish one from another by seeing the mark on the packs.
From the registration of graphic distinctive signs, we moved on to the registration of so-called sound marks.
If today we see the advertisements of the major car manufacturers on television we notice that the appearance of the graphic mark is always associated with a specific jingle. This jingle is a registered trademark.
The oldest sound mark is surely the lion's roar of Metro Golden Mayer. Today, sound marks are regularly registered.
Can a perfume, therefore a "smell", have the function of distinguishing one product from another?
A manufacturer of tennis balls had decided to spray all his balls with an essence recalling the scent of cut grass. So if I imagine putting the tennis balls in bulk in large baskets, I would be able to recognise the ones from this company by their scent without having to read the brand name on the balls. I would be guided in my purchase by my nose alone.
In a decision that surprised everyone, the European authorities of the EUIPO granted the first olfactory trademark back in 2000.
After 20 years, this trademark registration was not renewed and today it is no longer on the EUIPO register. The examiner who 'surprisingly' granted the mark also no longer works for EUIPO.
Since this isolated case, there have been a number of applications to the EUIPO for olfactory marks.
One company wanted to make its anti-depressive pills orange-scented. The application for an olfactory mark was refused.
Another company wanted to spray the soles of its shoes with a lemon scent. The application for an olfactory mark was refused as were all the other applications for olfactory marks (strawberry and vanilla for various products).
To date, no olfactory mark has been registered in the European Trademark Register nor in the Italian trade mark register before the Italian PTO (UIBM).
A very recent reform of trademark registration regulations in Italy confirms that there is no way within the procedure to apply for an olfactory trademark.
Therefore, I consider that the jurisprudence and legislative evolution that could lead to the possibility of registering olfactory trademarks has been definitively set aside.
The only exception is India, where some entrepreneurs have succeeded in registering olfactory trademarks after an expensive legal process that has lasted for years.