August 2006
A Smelly Affair
A Court of Appeal ruling regarding smells has been upheld by the Dutch Supreme Court. The ruling was concerned with the fragrance Lancôme and now signals that smells can be protected by copyright laws in the Netherlands.
In reaching their decision the Court had discarded an appeal voiced by competing perfume producer Kecofa which had professed that smells were outside the ambit of copyright protection. In June 2004 Lancôme had alleged trade mark infringement against Kecofa, allegations which were dismissed by the Court of Appeal. However, all was not lost and the Court found that there was a copyright infringement of Lancôme’s Trésor smell in the smell of Kecofa’s Female Treasure product. That finding was based on physiochemical analysis of the two perfumes which found that 24 out of 26 olfactory components were the same. In its reasoning the Court of Appeal stated that the rationale behind Trésor gaining copyright protection could be attributable to a number of factors. Firstly the scent was apparent to sensory functions. Secondly it was satisfactorily tangible and established to be deemed a ‘work’ and finally displayed a novel enough quality which could effect the hallmark of its creator. More compelling was Lancôme’s claim that the chances of a producer single-handedly formulating an analogous perfume was comparable to a person winning the lottery every day for 100 years!
In reaching its decision, the Supreme Court acknowledged that the evidence submitted by Lancôme was permissible, and determined that smells are not barred from copyright protection under Article 10 of the country's Copyright Law as long as they are original. In reaching its decision the Court resisted the arguments put forward by Advocate General Verkade, a copyright specialist.
The Court considered that copyright infringements of smell could be authenticated by undertaking laboratory tests and testing them before a panel. The decision of the Supreme Court may offer wider protection than the Court of Appeals judgement. The Court of Appeal had concluded that it was only the composition elements of a smell that afforded copyright protection and not the smell itself as that is variable. However the Supreme Court did not make this differentiation and merely stated that the scent of a perfume could seek copyright protection. If this is the case then protection could be applied to the smell in other merchandise and in countries where trademark rules are more stringent then this may now lead to an increase in attempts to protect smells using copyright. Where the product is original and meets the criteria of a ‘work’ then it can rely on copyright to prevent similar smells although the scope of protection will be limited.
Kecofa are also one of a number of companies that make similar smelling and looking perfumes often sold in markets. Their marketing of perfumes and other products often associates them with famous brands. However, to date, they have been successful in defending any trademark infringement and unfair competition claims.
Briffa Comment:
This decision will be a warning to all companies whose practice methods mirror Kecofa’s. On the one hand it will now be difficult for companies to produce imitations but on the other hand defendants will be spurred on to provide enhanced arguments as to matters of infringement. Even though cases highlight that courts are now following this precedent it is unclear how wide the criteria for establishing copyright in a smell will extend. Another recent case were the Claimant was victorious was that of L’Oreal who won their case, in the French courts, against a Dubai perfume company, Bellure, earlier this year. They were able to prove that the copycat perfume had 50 out of 52 olfactory elements in common. However the decision can be appealed.
Sanam Fiaz
sanam@briffa.com