Protecting Scent Trademarks (2): how to present a fragrance?

For a long time, EU law considered it theoretically possible to protect a fragrance in trademark law, but practically impossible. Because a trademark and even a fragrance brand had to be graphically displayable. Since the EU trademark reform in 2017, this is no longer obligatory: easy going for scent trademark protection the EU?

No uniform jurisdiction in the EU

A look at the European jurisdiction on fragrance brands shows that there is no fundamental case law on the subject. The 2006 “Bsiri-Barbir v. Haarmann Reime” case from France is legendary. Fragrance is an application of purely technical knowledge without signs of creativity, therefore no trademark protection is possible. And also in 2013 the copyright protection of an odour was categorically excluded by the French Court of Cassation (ECLI:FR:CCASS:2013:CO01205).

Also in 2006, the Netherlands decided exactly the opposite, in the case of Lancôme v. Kecofa (2006). Perfumes that use very different chemicals and even smell identical can be a work in the sense of copyright, they said.

Legal basis for Protecting Scent Trademarks

Until the EU trademark reform in 2017, the decisive question was whether an olfactory mark can meet the requirement of graphic representability under Sec. 8 (1) MarkenG.

Since October 1, 2017, however, Regulation (EC) No. 207/2009 has applied – we reported ( Info Blog: Videos and sounds as EU Trade Mark ). Under this Regulation, representation of a trademark has not longer to be graphically displayable – if the trade mark can also be described in another way in such a way that the subject matter of protection is clearly and precisely defined. This leads to the interesting consideration: how to present a fragrance?

The comparative description of a fragrance like “Scent of burnt almonds” or “Scent of a ripe strawberry” does not meet the legal requirements for the representation of an olfactory mark and has so far been rejected. The background for this is that odours are largely subjective sensory perceptions that are perceived very differently on an individual basis.

Patent protection for fragrances

What then would be an indication of the chemical composition? Legally, patent protection, which can be granted for chemical substances and active substances, would be an option. In Germany alone, for example, there are over 100 patent applications for laundry detergent. So why strive for protection status as scent trademark, anyway?

Fragrance is more than its chemical composition

The purely chemical view does not describe a scent trademark completely. A fragrance composition is a complicated mixture of several natural and synthetic fragrances, which are also released in a temporal sequence. A scent classification, which could be used comparable to the current colour classification, is not yet available. Scent samples do not provide the stability and durability required for trademark protection in the EU. On the other hand, in the U. S. it is generally possible to protect a scent as a trademark – just a few weeks ago, toy manufacturer Hasbro has received scent trademark rights from the US Patent and Trademark Office (USPTO) for the unique scent of its “Play-Doh”.

Lack of distinctiveness

Of course for EU scent trademarks it would be essential to be distinctive. This can be problematic, vanillin for example is largely excluded for trademark protection. It is devoid of any distinctive character for cosmetics in Class 3, as vanillin is a necessary fixative in the base note. However, distinctiveness is also an issue for the entire fragrance. Again and again bitter arguments between brand perfume manufacturers and cheaper imitators have been brought to court, mostly because of the packaging of fragrances. The more scent trademarks are granted, the more liklihood of confusion will be found.

Conclusion

The new EU Trademark Regulation encourages creativity in the application for EU scent trademarks. Therefore the development of a perfume or fragrance should be documented in detail, and moreover there should be an attempt to apply for scent trademark protection. Because as soon as more fragrance brands will be protected in the EU, it will also be necessary to be able to show distinctiveness and priority one’s own fragrance.