Perfumers will look to protect the branding of their scents by registering their name or logo as a trade mark. This route will prevent other scent manufacturers from using identical or confusingly similar names, however this will not address the fact that a dupe may be almost identical in smell to the real thing. Perfumers may seek further protection by registering a non-traditional trade mark. The most relevant non-traditional trade marks for perfumers will be smell, bottle shape (as successfully achieved by Coca-Cola with its iconic bottle), and colour use.

There are substantial hurdles to overcome if a perfumer is to successfully register a non-traditional trade mark. Trade mark registries will need to be satisfied that the mark in question is clear, precise, self-contained, easily accessible, intelligible, durable, and objective. These criteria pose substantial difficulties when it comes to registering smells – as smell cannot be graphically represented and a sample will not be sufficient. Whilst it is not impossible per se to register a scent as a trade mark, the fact Chanel was unable to register its famous N°5 fragrance suggests this may be unattainable in practice. It is noteworthy that one of the key objections raised by registries is that the mark, for which protection is sought, should not stem from the nature of the product in itself. This poses a particular hurdle to perfumers who, arguably, only sell scent for its olfactory qualities.

Without trade mark protection a perfumer could in theory look to the law of passing off to bring a claim against dupes. A perfumer would need to show there was a misrepresentation by the dupe, that the perfumer has goodwill / reputation in the smell and that the misrepresentation has damaged the perfumer. Passing off has not been successfully argued in the courts in respect of a perfume scent, in a 2006 case the High Court rejected L’Oréal’s claim that the smell of a perfume formed part of the ‘goodwill’ in a particular perfume brand.

Many dupe scents state to be ‘inspired by’ a particular perfume. This may seem like a flagrant abuse for brand owners, but this will not amount to trade mark infringement as the dupes are not representing to consumers that they are producing the actual perfume in question. The producers of dupes do however walk a fine line. If it can be shown that the dupe is portraying to sell the scent in question or uses the brand logo and / or a similar shape bottle, a brand owner should look to enforce their trade mark and / or rely on the law of passing off.

Given the level of investment that is required to create and market perfumes, there is merit in the argument that dupes should not be able to ride off the coat tails of perfumers. A re-examination of the trade registration criteria by legislators would be timely and perhaps the only means for perfumers to attain better protection for their brands.

Article drafted with collaboration and thanks to Dennis Lee and Tancred Campbell, BDB Pitmans.