This quotation from Robert Blondin fits perfectly in the wake of the case law of the French Court of Cassation which still refuses to grant any protection to the fragrance of a perfume. The secrets of the perfume and its olfactory composition could thus be discovered with the help of noses, analyzed and reproduced by competitors without any risk for them to be prosecuted for counterfeiting. Despite the opposition that has marked some substantive jurisdictions against the lack of protection of perfumes by copyright, the Court of Cassation has continued to maintain its position by judging that "the fragrance of a perfume, which proceeds from the mere implementation of a know-how, does not constitute the creation of a form of expression that can benefit from the protection of works of the mind by copyright".
Thereby, it can be noticed how case law has always been reluctant to admit that a perfume could fall under intellectual property rights even though the ways in which it is being manufactured is in continuous development. Moreover, on the grounds that perfumes are not, according to the High Court, works of the mind, they cannot be susceptible to appropriation. This means they do not benefit from any formal protection under intellectual property regulations.
However, could protection under industrial property law be considered?
The judgment of December 10, 2013, delivered by the Commercial Division of the French Court of Cassation, which happens to be the last in this matter, has come to put an end to these resistances by reporting a new legal basis. At the same time, it’s giving a solution with no effects. In this case, several companies producing and distributing perfumes, including the Lancôme Maison, have infringed an individual who was criminally prosecuted for possession without a legitimate reason (during a clearance sale) of perfume bottles covered with a counterfeit trademark. The plaintiff companies considered that the seized products constituted infringements of their trademarks and copyrights, thus justifying the payment of damages.
In this context, the prestigious French perfume company, Lancôme, had filed a lawsuit relying, on one hand, on the protection of copyright and, on the other hand, on counterfeiting of the mark, as well as on unfair competition. In my opinion, a procedural law mechanism such as this one is likely to be interpreted in this manner: if the French Supreme Court would admit the latter two means, it’d reject the former by considering that the fragrance of a perfume does not appear to be a tangible and identifiable creation with sufficient precision in order to be further transmitted to someone else.
2. The fragrance of perfume: a form of unimaginable originality
Article L112-1 of the French Intellectual Property Code states that the provisions of this Code protect copyright in respect of all intellectual works, whatever their type, form of expression, merit or purpose. Therefore, this article does not exclude the perfume, which can take an original form. However, the French Court of Cassation does not share the same opinion and attempts to exclude from the scope of copyright protection all creations by proceeding to the implementation of a simple savoir-faire/know-how. In view of this position, the Regulatory Court engages, in addition to doctrine, an endless struggle with substantive judges who do not seem willing to comply.
Thus, the Court of Appeal has repeatedly held that ‘the fragrance of a perfume is a protective work consisting of the "olfactory architecture"’. Therefore, the Court of First Instance admits that ‘the form is determined by the sensory faculties of a person, which reveals a judicious analysis’. Moreover, part of the doctrine seems to align with this reflection just as Jeanne DALEAU, who states that ‘if form and originality are respected, olfactory creation should be able to be qualified as a work‘. However, the Court of Cassation in the aforementioned judgment refuses to review their decision and refers to a new justification, answering the arguments of its many adversaries. Indeed, it is now interested in form, without neglecting the idea of "savoir-faire/know-how".
Thus, it states that "copyright protects creations in their sensitive form, as long as it is easily identifiable with sufficient precision to allow communication; the fragrance of a perfume, which, in addition to its elaboration process, is not an intellectual work itself, does not assume a form that has the characteristics described above, and, therefore, cannot benefit from the legal protection of the perfume copyright". In this way, the Court denies the identification of a form by smell.
However, this solution is not devoid of any consequence in the perfume industry, which is experiencing a development of the means for fast product communication.
3. A relatively compensated protection through civil action in unfair competition
The Court of Cassation does not call into question the protection of the mark by proving the incidence of its counterfeiting. However, in the case of the analysis, the mark was counterfeited and, as such, the action in unfair competition proved to be well founded. However, it does not protect the perfume fluid itself. Therefore, if the recipe had been stolen by a competing brand, the action to counterfeit the mark would have been ineffective. This action must, therefore, be accompanied by the action in unfair competition, which is openly civil. However, it has the disadvantage of being more restrictive for the applicant, as he or she will have to prove the existence of an infringement, an injury and the causal link under Article 1383 of the French Civil Code. On the other hand, it is not necessary to bring all these elements in the field of copyright, since the mere reproduction of a work without the authorization of its author constitutes a punitive offence in the criminal field, but also one liable to engage civil liability tort.
This solution is obviously an open violation to unscrupulous traders, who will not hesitate to reproduce remarkable perfume recipes in order to sell them at low prices in a completely licit manner. Given the fact that it is abundant and allows the rapid creation of the product, the fragrance industry actually justifies this situation. As a result, some authors pleased with this solution want to confine themselves to a traditional definition of artistic creation. In their view, copyright "is not meant to serve as means of exemption for those who cannot or do not wish to have an industrial property right", as it has no vocation to protect "the industrial art of the masses".
4. Protection of fragrances/perfume flavours through intellectual property law rules: a right to become?
Today, the fragrances of perfumes cannot benefit from the protection of intellectual property rights, and in support of this statement comes a principle established by case law, as I suggested at the beginning of this article that "the smell of a perfume, resulting from the simple implementation of savoir-faire/know-how does not constitute (...) the creation of a form of expression that can benefit from the protection of intellectual works by copyright".
However, this approach has been the object of resistances, considered in a slightly antagonistic manner, especially that "the development of a perfume cannot be limited to a purely technical invention and to an unprotected savoir-faire, since the perfume is the apogee of an artistic research work".
Similarly, some judges have argued that the process of creating a perfume requires a research concerning the combination of essences "which identifies a characteristic olfactory form capable of reflecting the personality, sensitivity and imagination of the author and, if it is original, an artistic creation likely to benefit from the protection of the copyright (...)".
The protection of perfume flavours has also been researched on the field of trademarks, but all of this was in vain, due to the legal requirement of "graphic representation" of the mark, which also makes it impossible to register odours as trademarks.
This impossibility was confirmed by the Court of Justice of the European Union in the Sieckman case - CJEU, Ralf Sieckmann v Deutsches Patent- und Markenamt, 2002 - in which it was considered that, like an olfactory sign, "the requirements of graphical representation are not considered to be satisfied by a chemical formula, by a description using written words (‘a fruity balsamic scent with a cinnamon note‘), by depositing an odour sample or combining these elements".
However, the legal requirement of "graphic representation" of the mark disappeared on December 15, 2016, with the adoption by the European Parliament of the ‘Package of Marks‘ reform constituted by the Regulation (EU) 2015/2424 and the Directive (EU) 2015/2436, in which the European texts on the law of trademarks were modified, by removing the requirement of "graphic representation" of the sign registered as a mark and its replacement by an obligation to represent the sign "so as to enable the competent authorities and the public to determine the precise object of the protection granted to the owner of the mark".
In the end, I would like to bring into attention that the inclusion of fragrances in the illustrative list of works worthy of being protected by copyright and the inclusion of odours in the signs that could be protected by trademark law could, in this respect, be opportune.
In fact, since the lack of protection of a creation does not result from a "self-neutralization of the law" of intellectual property, but from a lack of benchmarks and the fear of judges and examiners to see the latter reserved, there is no need to look for a suitable protection regime and proceed to the consecration of a sui generis right for its benefit. We have satisfactory legal mechanisms to offer protection to olfactory creation. The above-mentioned reform has the merit of attesting to this. Certainly, "law is a language" and as Süskind so aptly pointed out, "our language is worthless to describe the world of odours".
However, I do think that this world is not necessarily impenetrable and the protection of olfactory creations by our intellectual property law is probably conditioned by the conquest and understanding of the latter.
As a result of the research I have undertaken on this subject, I say that an open conclusion, which would merit both the preservation of art and the relaxation of the courts, remains somewhat in the heart of the debates still existing on this topic.
By Rebecca-Georgia Dunca
This material was published in Lawyr.it Vol. 5 Ed. 3, September 2018, available only online.
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