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How Can Perfumes Be Legally Protected

In this article, we will discuss the different forms of intellectual property rights that can protect perfumes in the EU. Perfumes are unique products – a liquid end-product with a unique smell, the fragrance. It is important to understand the nature of perfumes and the different elements they have. Different elements are entitled to different protection. Perfumes can get protection through copyright, trademarks, patents, designs and trade secrets. When you are seeking protection for a non-traditional creation, you need think out of the box.

Can perfumes be protected by copyright?

In theory, perfumes can be protected by copyright in the EU. The question lies mostly in whether perfumes are authorial works subject to copyright. In the different EU Member States, views vary.

For example, The Supreme Court of the Netherlands found in a 2006 judgment (Kecofa v Lâncome) that the smell of a perfume may fulfil the requirements of copyright protection, even if only perceptible through the nose. The Court distinguished the scent of a perfume from its recipe or the liquid containing it, comparing the latter to the paper of a book, which is not subject matter of copyright, whereas the content of the book is. This distinction implies that a perfume that contains completely different ingredients but smells the same may be infringing, while a perfume with a similar formula but a different scent would not be.

According to Article L.112-1 of the French Intellectual Property Code, “protect the rights of authors on all works of the mind, regardless of genre, form of expression, merit or destination”. Nevertheless, perfumes are not protected by French copyright, the droit d’auteur. The Cour de Cassation, the Supreme Court of France, ruled “the fragrance of a perfume, which proceeds from the simple implementation of a know-how, does not constitute the creation of a form of expression that can benefit from the protection of copyright”. Therefore, perfumes are not protected by copyright in France.

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Can perfumes be trademarked?

You can trademark the name of your perfume by registering your trademark with the relevant authorities in your jurisdiction, for example USPTO or EUIPO.

If you have a brand of perfume that your customers use to identify you as the source of the perfume, you can protect that brand (whether it’s a name or logo) by applying for a trademark.

Registering your perfume trademark gives you protection over the brand of your perfume in the jurisdiction it’s registered for. It allows you to prohibit others from using your trademark brand (such as name or logo) on their own perfume bottles in the jurisdiction it’s registered for.

Furthermore, you can protect the scent of your perfume with a trademark if your scent is one that identifies you or your business as the source of the perfume. To protect the scent of your perfume with a trademark, you are required to send a sample of the perfume to the trademark office. If you’ve invented something that is popular and commercially successful, it may be worth protecting the scent of it with a trademark. The benefits of trademark protection include that as long as you renew it on time, the protection is forever.

If someone infringes on your trademark by labeling their perfume as originating from you or the trademarked scent, you are able to sue them for trademark infringement. If your lawsuit is successful, you will be able to get a court order, ordering them to seize their infringing activities. However, often cases are settled before court.

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Can perfumes be patented?

The short answer is that only the composition of perfume can be patented, the scent itself cannot be patented. That means that only the mixture of ingredients that go into perfumes can be patented. The scent of perfume itself cannot be protected with a patent because it does not fall under the definition of a patent because it does not qualify as a composition of matter, but the unique mixture of ingredients that go into perfume can be patented.

Those who invent new perfumes often do not seek to patent them because part of filing a patent application requires the disclosure of all of the ingredients that go into the perfume. Patent applications become public after a short period of time. Therefore, most choose not to patent their perfume to avoid having the ingredients become public. 

If you are considering to patent your perfume, you should know that you will have to disclose everything that goes into making your perfume to obtain the broadest patent protection possible. For many, making this broad of disclosure is not the smartest thing to do. This is the case especially if you have a really unique and commercially successful perfume that’s difficult to reverse engineer.

However, if you successfully patent a new and unique mixture of ingredients for a perfume, you will be able to restrict others from using, making, selling, or offering to sell a perfume that has a similar mixture to the one you’ve patented.

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Can perfumes be protected by design rights?

Generally speaking, you cannot protect the perfume itself using a design rights. Design patents protect the aesthetic or ornamental appearance of an object. Perfume does not fall within the protection of design patent law because perfume itself does not have an appearance that can be protected.

That said, while the perfume inside of the perfume bottle cannot be protected with a design rights, the perfume bottle or packaging can be protected with a design patent if they have a new and unique appearance.

To protect the design of your perfume bottle or its packaging in European Union, you have two choices: either protect your design with the European Union Intellectual Property Office (EUIPO) before you commercialise it and obtain a registered Community design (RCD) or, alternatively, commercialise it directly without registration by relying on what is known as the unregistered Community design (UCD) right. The fee for registering and publishing one design is €350 for five years’ protection.

A registered Community design is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years. An unregistered Community design is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.

In the US, you will have to prepare and file a design patent application with the USPTO. Design patents are fairly easy to get so long as you comply with all of the patent office’s application requirements. 

Once the patent office issues or grants your design patent, you can restrict others from using a perfume bottle that has a similar design to the one you’ve patented. This protection lasts for 15 years from the date the patent office grants your design patent application.

Can perfumes be protected by trade secrets?

Since patents require the disclosure of all of the ingredients that go into a perfume, many often opt to protect their perfumes under trade secret law.

Trade secret law allows perfume makers to protect the formula of their perfume without having to publicly disclose the ingredients of the formula.

Relying on trade secret protection, you don’t need to worry about other parties copying the formula to make a similar, competing fragrance.

The protection available via trade secret law varies in different jurisdictions, but it is important that the formula is kept secret, because only something that is not publicly known can be a trade secret. Therefore, it’s very important to use confidentiality agreements and include confidentiality provisions in all employee contracts.

Anne Nyström

anne.nystrom@belegally.com

LL.M. Anne Nyström is Co-Founder of BeLegally. She practises law at Vedinor Law Offices in Finland, providing advice to clients worldwide. Her focus areas include international and European e-commerce, intellectual property, marketing, and social media. In her free time, she enjoys art and culture in many forms, exercising in nature and writing fictitious adventures about sassy ladies in the charge of their own life. Anne is always happy to connect, so feel free to contact her at anne.nystrom@belegally.com or on social media.

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