Portugal: Olfactory Trademarks... What About Perfumes?

Last Updated: 13 August 2018
Article by Diogo Antunes
Most Read Contributor in Portugal, September 2018

Today I would like to talk about olfactory trademarks, but what about perfumes?

In the world of industrial property, more specifically - Trademarks - there was a huge buzz around the new Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 and the new EU Regulation 2015 / 2424 of the European Parliament and of the Council of 16 December 2015.

The new Regulation entered into force on March 23rd of 2016, however some provisions only entered into force on October 1st of 2017, since it was necessary for the National Institutes and the European Institute itself to be able to adapt to the new provisions, in particular Article 4 of this regulation. In order to do this, it was necessary to adapt the computer and procedural systems to accept the new rules effectively.

Regarding the New Directive, Member States need to transpose it until January 14th of 2019.

The major change announced by the Community Instruments was the elimination of the requirement of graphic representation. As we know, invisible signs in the light of the Jurisprudence and previous legislation had numerous difficulties to demonstrate its graphical representation, without even addressing the issue of distinctiveness. Within the non-visible signals, the sound marks may be the ones that cause the least problems. Regarding the olfactory marks the Court and EUIPO, former OHIM, had a very restrictive interpretation on the graphical representation of such signals.

This new legislation could give a new light to the registration of unconventional signs, especially the olfactory marks, however as we will now analyze the changes announced may have brought nothing new.

The Jurisprudence that determined all the understanding about graphical representation of the olfactory trademarks goes back to the famous SIECKMANN case.

In that case the applicant intended to register the olfactory trademark "balsamic-fruity odor with slight cinnamon notes" for various services in classes 35, 41 and 42 (such as catering, advertising, agricultural services, etc.).

The applicant described the odor as being "pure chemical substance methyl cinnamate (a cinnamic acid methyl ester") and added a sample of the odor and its chemical formula - C6H5-CH = CHCOOCH.

The Court first of all stated that olfactory trademarks may be registered, provided that they comply with the requirements laid down for the trademarks. As for the graphic representation, it must enable the signal to be represented visually, in particular through figures, lines or characters, so that it can be accurately identified. This representation must be clear, precise, complete on its own, easily accessible, intelligible, durable and objective. The Court stated that the purpose of a graphic representation is to define the trademark itself and the scope of its protection so that it is possible to determine the exact object of the protection that is conferred.

Having made these considerations the Court considered that the Chemical formula, the description of the odor; the presentation of a sample, and the combination of all these evidences did not fulfill the requirement of graphic representation.

In general terms, it considered that the graphic description was not sufficiently clear, precise and objective. That a sample of an odor is not stable enough or lasting enough, there may be oscillations due to temperatures, altitudes or simply over time. As for the chemical formula, few people would recognize the odor in this formula.

Before this application for a Community trademark only one was granted, the famous case of tennis balls that smell of cut grass. However, this case was decided by the Board of Appeal of OHIM and not by the Court of Justice. That is why we will never know whether the Court's view would be contrary to the Institute's vision.

The truth is that from the Sieckmann Accord onwards no other olfactory trademark was granted in the European Union.

Now let's see the article of the regulation, which abolished the requirement of graphic representation:

Article 4

Signs of which an EU trade mark may consist

An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

  1. distinguishing the goods or services of one undertaking from those of other undertakings; and
  2. being represented on the Register of European Union trade marks, ("the Register"), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

As we can see, the article states that, although not graphically, the representation must be clear and precise in order to measure the respective protection. That is, however, the conclusions drawn from the Sieckmann judgment on graphic representation. And as incredible as it may seem, the scenario is much more caricature if we look at Whereas 13 of the Directive and 9 of the Regulation. We notice the following:

  • “…A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
  • 13º “…In order to fulfil the objectives of the registration system for trade marks, namely to ensure legal certainty and sound administration, it is also essential to require that the sign is capable of being represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

As we can analyze the European legislation adopted the interpretation of the graphic representation that the Court adopted in its jurisprudence but eliminated from the representation the need to be graphic. It seems to us that eliminate a concept and put their interpretation is not at all impose a change in the system. However, we do not intend to demonize the changes. In supposing that the representation can be made by other technological means. Assuming that representation can be made by other technological means, a probable exemple jumps across our mind, in the near future: If electronic devices can project odors, for example, the consumer would easily have access to the odors that wanted to be registered by simply clicking a button. Which means that the representation of the odor in the register would be a direct representation and not provided by indirect means (which weighs in favor of its proper representation), however would remain a very debatable subject if we continue with the tight requirements imposed by the Sieckmann Jurisprudence.

Speaking of odors, and giving meaning to the opening phrase of this article, where do the perfumes remain in the middle of it all? Perfumes are capable of being the most ungrateful products in intellectual property. All possible rights tend to deviate from their protection. Against its protection through trademark is the debatable understanding that the odor can not be an attribute nor a natural feature of the products. Which means that perfumes can not avail of themselves. It is this understanding that, for example, we can see in the Trademark Manual of Examining Procedure made by the USPTO - “Examining attorneys should also consider the functionality doctrine in relation to other types of non-traditional marks, such as scent. For example, an application to register scent for an air freshener…”

This doctrine spread by Courts, laws, authors, it abolished with all hopes of a protection of the perfume industry through the Trademarks.

And by a patent? In the United States it is possible to patent the perfume formula, there is even a class (512) which guides the perfume patents. The major problem of patent protection of a perfume is that companies would be obliged to disclose to the public the formula protected by the patent, and would have only an exclusive of 20 years. And their competitors can, through reverse engineering, adapt the formula, or after the 20 years of protection copy it.

All we have left is copyright protection.

In France in the case of Bsiri-Barbir v. Haarmann & Reimer (Cour de Cassation, Paris, France [2006] ECDR 28, the Court held that the manufacture of a perfume only involved technical knowledge and did not meet the protection requirements of a work.

Radically Dutch Court in the case Lancôme v. Kecofa has agreed that a perfume can be protected by copyright. The Court said that the legal list which contained several works was not exhaustive, and that the concept of work is general and does not restrict odors. In order to be subject to protection it is enough that it is perceived, has an original character and that it has a personal character of the creator. To be subject to protection has to be perceived, has an original character and has a personal character of the creator. The Court also added that some provisions of the law would have to be adapted to the reality of odors, including free use by consumers.

It remains to be noted that what copyright pretends to protect in this understanding of the Court is the substance that gives rise to the perfume. This is due to the fact that the perfume when released is quite volatile and uncertain.

Surely copyright protection creates huge problems, but it manages to solve the most fundamental - lack of protection.

I must conclude that there must be a common understanding on what is the most effective way to protect a perfume. Perfumes have a strong global presence, it is a very competitive area, and do not have a deserved protection.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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