In the Fragnantic world, the demand for luxury perfume is rising. Esteemed brands such as Chanel, Dior, and Gucci have established a distinguished reputation, not only for their exceptional scents but also for setting a benchmark of elegance, sophistication, and excellence in the expanding market. However, the market has seen a boom in the creation of "dupes" as a result of these...
In the Fragnantic world, the demand for luxury perfume is rising. Esteemed brands such as Chanel, Dior, and Gucci have established a distinguished reputation, not only for their exceptional scents but also for setting a benchmark of elegance, sophistication, and excellence in the expanding market. However, the market has seen a boom in the creation of "dupes" as a result of these products' exorbitant prices. Social media has recently seen an increase in the visibility of ads and websites[1] marketing these knockoffs, which provide perfumes with scents akin to luxury goods at far more affordable prices. A recent survey shows that 50% of 1453 UK fragrance buyers purchase dupe scents[2].
Given the value and reputation of these brands, any unauthorized use or imitation could mislead consumers, dilute brand identity, and undermine the distinctiveness that the original trademark proprietors have painstakingly cultivated. This raises a pressing legal question: Can and should scent itself be protected under trademark law?
'Dupes' V. 'Counterfeit'
Since dupes are not manufactured with the malicious intent of misappropriating the goodwill or reputation of the original brand, sellers are generally not held liable for any financial loss suffered by the brand owner. Unlike counterfeits, dupes do not attempt to deceive consumers into believing they are purchasing the genuine product. Instead, they merely seek to replicate certain features, in this case fragrance, while maintaining distinct differences in design, name, and branding offered at a more accessible price point.
As there is no consumer confusion or misrepresentation, the legal principle of passing off, which protects against misappropriation of brand reputation, is not typically invoked against dupes.
The Indian Trademark Landscape
Notably, a thorough legal structure for trademark registration, protection, and enforcement in India has been established under the Trademark Act of 1999. It provides protection for words, signs, and symbols, but it leaves a big hole by lacking protection for non-traditional marks, including olfactory marks[3]. This omission creates a loophole, allowing dupes to flourish without breaching trademark law, so long as they avoid brand names and designs (here) (here).
Why Olfactory Marks Are Hard To Protect
Olfactory marks are a form of non-traditional trademarks, consisting of a distinctive smell or scent rather than a word, logo, or design. In such situations, the fragrance itself serves as a source identifier, making it possible for consumers to directly link a certain smell to a certain brand.
According to Article 15(1) of the TRIPS Agreement, a fundamental requirement for the registration of a trademark is that the mark must be visually perceptible. This indicates that at the moment, non-visible signs, such as olfactory marks (trademarks based on smell), are not protected by trademark law. Due to the lack of legal recognition for these non-traditional marks, original brands have brought down disputes, underscoring the need to resolve this legal ambiguity and igniting calls for profound changes to the current trademark system.
Similarly, Section 2(1)(zb) of the Trademark Act defines a trademark and explicitly requires that the mark must be capable of 'graphical representation'. However, scents or fragrances, by their very nature, are subjective and intangible, making them difficult to represent visually or graphically. For instance, the U.S. Patent and Trademark Office (USPTO) once denied a trademark application for a mint scent, ruling that it serves a useful purpose. Since it's functional (not just a brand feature), it can't be protected as a trademark[4].
A Glimpse From Abroad: US And EU Status
Despite these challenges, some jurisdictions have shown a degree of openness. Some jurisdictions have recognized and modified the above theories, which led to the registration of the mark. Some of the countries that have shown a positive shift in the area are the United States, the United Kingdom, and the European Union. According to the U.S. Patent and Trademark Office, the prerequisites for an olfactory mark to be registered are-
- Proof of non-functionality- To get a scent trademarked, the company must prove that the smell mainly helps customers recognize the brand, not that it makes the product work better. This rule is called the functionality doctrine.
- Proof of Distinctiveness- Secondary meaning occurs when a descriptive or non-distinctive feature gains a unique association with a specific source or brand over time, eg, Apple.
The USPTO approved the registration of a bubblegum scent for sandals after it was shown to have acquired secondary meaning—it had become uniquely associated with a specific brand and served no functional purpose[5].
The European Union and the United Kingdom have also gradually started to accommodate scent-based trademarks, albeit with rigorous proof requirements.
As a result of the need, various judicial precedents have been made that really paved the way for the protection of these marks and the goodwill of the original brands.
In Sieckmann v. Deutsches Patent- und Markenamt[6] The European Court of Justice laid down the famous seven-fold test to determine whether the mark can fall under the purview of graphical representation, though being directly perceived or identified visually. The test includes the essentials, such as clear, precise, durable, objective, intelligible, easily accessible, and self-contained. Though the test was rigid and complex yet it opened the door for a clear version of making olfactory marks to be protected.
The Bigger Picture: Competition Vs Protection
In an effort to go beyond the bounds of conventional intellectual property protection, more and more well-known companies are aiming to trademark their distinctive fragrances. However, under the current legal framework, this goal is mostly challenging due to its many conceptual and legal complications. Prominent legal experts contend that obtaining trademark protection for fragrances is intrinsically difficult since it requires meeting two competing requirements at the same time, which is rarely achieved in reality. The legitimacy of these efforts is also questioned; many contend that rather than preserving true brand identification, this aim to monopolize olfactory components is a part of a wider, perhaps immoral scheme to stifle market competition. Although some argue that companies that produce counterfeit or deceptive products should compensate original inventors for the monetary losses incurred due to scent-mimicking, the validity of such claims remains dubious.
The inherent subjectivity and non-visual nature of fragrances make this a challenging endeavor. Trademarking a smell continues to be more of a theoretical than a real right until national and international regulations evolve to make way for non-conventional marks like smells, sound, etc. The legal gray area surrounding olfactory marks invites urgent reform, not only to protect brand goodwill but to ensure fair market practices. As courts and lawmakers begin to confront this issue, they must strike a balance between intellectual property protection and healthy market competition.
The author is an Advocate, views are personal.
[1] https://www.perfumelab.me/products/terrea-dhermesa-by-hermesa-version-id-pl0378-9ml-edp-spray-SKU-4414
[3] https://www.wipo.int/export/sites/www/sct/en/meetings/pdf/wipo_strad_inf_3.pdf (Area of Convergence no.8)