The sense of smell is the most powerful of our senses; it allows us to record information that generates connections between people, habits, places, and events.
Over the centuries, perfume has evolved from a sinful element of perdition into a means of expression that speaks of us and our style. Furthermore, perfume is an immediate connection to an aura of luxury and elegance: two drops of N°5 instantly make us feel like Marilyn Monroe.
It is therefore understandable that the perfumery market is one of the few sectors not to have suffered from the economic crisis and, indeed, has grown in recent years.
Alongside the creation of new products and fragrances and the emergence of new professional figures – the so-called "NOSES" – more and more companies are investing in "Sensory Marketing," namely the use of fragrances as a method to attract and retain customers (one need only think of all those companies that have decided to scent their environments with particular notes, designed to imprint the perfume-company association in the customer's brain and thus make the purchasing experience more pleasant).
But how can a perfume be protected?
Historically, the fragrance industry has found protection through the discipline of trade secrets and know-how, revealing ingredients only in the presence of strict confidentiality clauses. However, in more recent times, the need has arisen to find some form of protection that would allow, on one hand, the maintenance of a form of exclusivity over the fragrance and, on the other, compliance with the regulations regarding product packaging and labeling which, to protect consumer safety, required the perfume container or packaging to carry indications relating to its composition.
In searching among the means of protection provided by the legislator, we might agree that a perfume could abstractly be protectable through the form of a patent, by registering the chemical formula of the substance that emits it. However, since patenting implies the immediate publication of what such a patent claims – ingredients, quantities, mixing and combination methods – few perfume producers would agree to completely divest themselves of their secrets for a protection that is, moreover, time-limited.
French and Dutch perfume producers breathed a sigh of relief when the Paris Court of Appeal and the Dutch High Court – respectively in the judgments Oréal v. Bellure and Lancôme v. Kecofa – recognized the protectability of fragrances as intellectual works protectable by copyright, provided they are perceptible and original.
It should be added that, in this case, unlike what would happen with patent protection, it is the perfume itself that will be protected and not the liquid from which it originates; in the same way that it is not the paper of a book that is subject to copyright, but its content. Therefore, paradoxically, the production of a perfume containing completely different ingredients but releasing the same fragrances will constitute an infringement, while the production of a perfume with a similar formula but emitting a different scent will be lawful.
We should also note, for the sake of completeness, that the theory that fragrances can be protected by copyright was overturned in a similar case by the French Supreme Court which, in the case Bsiri-Barbir v. Haarmann & Reimer, declared that the fragrance of a perfume does not constitute a tangible form of expression and is therefore not subject to copyright protection as perfumes are manufactured through the application of purely technical knowledge.
In the need to trace some form of protection for the high investments in the perfumery industry, which requires ever greater economic efforts in terms of research, production costs, and the procurement of increasingly unique products, the possibility of registering a fragrance as a trademark has recently been admitted, provided it is new and distinctive.
The first frontier of this practice – as is easy to imagine – was the United States legal system, whose first olfactory trademark dates back to 1990 and consisted of a "fresh, floral fragrance reminiscent of red plumeria blossoms" to distinguish sewing thread from embroidery thread. Recently, the smell of piña colada was registered by a musical instrument company to distinguish the ukuleles of its production.
In the European context, however, an obstacle still stands in the way of registering fragrances as trademarks, namely the difficulty of satisfying the requirement of "representation" (no longer "graphical representation," at least in European regulations) of the sign, as fragrances are not material and "visually perceptible" entities.
Indications in this regard can be inferred from the decisions of the European Courts and the practice of the EUIPO (European Union Intellectual Property Office) which, in certain cases, have allowed a verbal description of the scent if the olfactory sign, as described by the applicant, represented a precise smell, recognizable by anyone on the basis of their own memories. Thus, the trademark for the "scent of freshly cut grass" applied to tennis balls was considered registrable.
Conversely, descriptions not considered sufficiently objective but rather linked to the cognitive capacity of the applicant (e.g., "fruity balsamic odor with a slight trace of cinnamon") were not considered satisfactory, nor were chemical formulas, as they are not clear and intelligible, or the deposit of a sample, because it is not stable and durable over time.
At the community level, the use of a sort of "International Classification of Odors" has also been suggested, similar to that which already exists for colors or writing, which could allow for the objective and precise identification of an olfactory sign thanks to the attribution of a specific name or code. This would allow applicants to successfully fulfill the burden of representing the olfactory sign.
Such an international classification system has not yet been developed, although an attempt was made by the Technical Commission of the Société Française des Parfums which, in 1999, created a "Classification des Parfums" grouping the fragrances used by the perfume industry into specific odor classes.
Other national legal systems, however, provide for less restrictive criteria for the graphical representation of olfactory signs: the British Trademark Office, for example, granted the registration of a "floral fragrance of roses" applied to tires and a "strong smell of beer" applied to darts.
These difficulties, perhaps, would not arise if one were to return to the theory of the protectability of fragrances under copyright law, where the right is acquired by the mere fact of creation/externalization and the registration of the work has a mere value of public notice.
However, it is legitimate to doubt that this path would be definitive; in fact, if originality is an essential requirement for the recognition of copyright, it seems difficult to discern such an element in many of the smells that have so far been claimed as distinctive signs, such as the aforementioned "smell of cut grass."
In conclusion, it must not be forgotten that every protection tool corresponds to a specific function: the protection of a fragrance as a trademark requires the ability to distinguish and, therefore, what can be advised to those interested in registering an olfactory trademark is to increase investment in communication and advertising: in all probability, by using the fragrance it will acquire secondary meaning (acquired distinctiveness) and, through clear proof that consumers recognize that company or its products by virtue of a specific smell, there will be greater chances of registering it successfully.