Smells Like Trouble, Yet No Trademark Battle? - Scent Dupes And Their Legal Conundrum
INTRODUCTION
In the scent-sational world, the allure of luxury perfumes is undeniable. Iconic brands such as Chanel, Dior, and Tom Ford have set a high bar, creating scents that are not only olfactory masterpieces but also symbols of status and sophistication. However, the high price tags associated with these perfumes have led to the rise of "dupes"—affordable imitations designed to replicate the scents of these prestigious brands. A few brands, namely Bella Vita and Plix Perfumes have even become notable examples for garnering attention by openly marketing themselves as creators of cheap substitutes to these high-end scents.
Given that intellectual property rights aim to safeguard innovation and creativity by providing protection to original creations, the proliferation of dupes raises complex legal and ethical questions, specifically in the realm of protection of smell marks. This is particularly evident in the perfume industry, where iconic fragrances are often left vulnerable due to the stringent and sometimes inconsistent application of trademark laws. A notable example is the Chanel case [1] where Chanel's No. 5 perfume was denied registration as a smell mark by the UK Trade Mark Registrar, while other unconventional olfactory marks, such as rose-scented tires and beer-scented darts, were accepted [2]. This discrepancy highlights the unfair hurdles faced by perfume companies in protecting their valuable assets.
This situation raises pressing legal questions about the protection of smell marks generally, and in India- is it time to rethink the protection of smell marks?
THE RISE OF DUPES: A MARKET PHENOMENON
“Dupes” generally refer to cosmetics that mimic high-end products but are available at a lower price point. While similar, it is crucial to distinguish dupes from “counterfeits” and “knockoffs.” Counterfeits blatantly copy original brands’ registered trademarks with the intent to deceive consumers. Conversely, knockoffs are inferior imitations of a product’s design, such as its packaging or logo. Dupes, however, do not aim to deceive; they simply offer affordable alternatives by replicating the colour, consistency, or formula of high-end products without necessarily copying the packaging.
Since dupes operate by creating perfumes that mimic the formula of high-end fragrances without directly copying trademarked names, logos, or packaging- they fall into a legal gray area where they are not considered counterfeits. This strategy allows them to avoid legal repercussions while still capturing a significant share of the market. Thus, the legal framework addressing counterfeits and knockoffs under the Trade Marks Act, 1999 (“TMA”) in India does not apply to dupes.
For example, Parfums de Coeur spent just $3 million on marketing with the slogan, “If you like OBSESSION by Calvin Klein, you’ll love CONFESS,” and achieved $30 million in sales [3]. In contrast, the original brand behind Obsession perfume had to invest $17 million in its launch to earn the same revenue. By replicating the formula of high-end perfumes, these dupes provide consumers with an affordable alternative, bypassing trademark laws that protect brand names and packaging but not the fragrance itself.
SMELL MARKS: THE CURRENT LEGAL LANDSCAPE
The TMA, 1999, primarily addresses traditional trademarks such as logos, names, and symbols. However, the Act also allows for the registration of non-traditional marks, including sounds, colours, and (potentially) smells. According to Section 2(1)(zb) of the TMA, the expression “trade mark” is defined inter alia to mean “a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods or their packaging and combinations of colours.” Further, Rule 2(1) (k) of the Trade Marks Rules clarifies that “graphical representation means the representation of a trademark for goods or services in paper form”.
This is problematic for two reasons. First, as indicated above, the definition of trademark makes it clear that in order to constitute a trademark it should be “represented graphically”, hence excluding smell marks from availing protection under the Indian trademark system. Second, this strict requirement of graphical representation stipulating that a trademark must be capable of graphical representation “and must distinguish the goods or services of one person from those of others”, raises challenges with smell marks automatically due to their inherently subjective nature. This is concerning because unlike visual or auditory marks, scents cannot be easily represented in a universally recognizable way and hence, the distinctiveness of perfumes is often undervalued. This subjectivity complicates the registration and enforcement of smell marks, due to which no such trademark appears to be registered in India.
Even in jurisdictions where smell marks are recognized, such as the European Union, the criteria for registration are stringent. The scent must be distinctive, non-functional, and capable of being represented graphically, which often necessitates a chemical formula or description.
In the Seickmann case [4], a chemical formula representing a scent and a description—“balsamically fruity with a hint of cinnamon”—were presented. The ECJ ruled that while the description was understandable and easily accessible, it lacked the necessary precision and clarity. Additionally, although the chemical formula was objective, it was neither comprehensible nor self-sufficient. Further, due to the application of the Seickmann criteria, which states that smell marks must be in a manner that is clear, exact, self-contained, easily accessible, comprehensible, durable, and objective in order to be registered, it can be stated that while smell marks may be theoretically registered, they cannot be practically registered. Consequently, this highlights that the above criteria can only be fully met by traditional trademarks, such as words or logos, and not by non-conventional trademarks such as scents.
WIN-WIN FOR CONSUMERS, LOSE-LOSE FOR BRAND OWNERS?
From a consumer angle, the rise of dupes appears to be a win-win situation, where they avail luxury brands at affordable prices. However, brand owners face a lose-lose scenario. This is because despite investing heavily in product development, branding and marketing of perfumes, they lack legal protection against dupes in the existing framework.
While this business model thrives on accessibility, appealing to budget-conscious consumers who crave a taste of luxury, it also poses significant challenges to the original creators of luxury fragrances. By imitating the formula of high-end products, dupes not only undermine the original brand's investment in research and development but also blur the lines of authenticity in the market.
The brand Dossier exemplifies this trend, crafting affordable dupes for luxury perfumes. For instance, their "Woody Sandalwood" mirrors Le Labo’s "Santal 33," and "Floral Honeysuckle" resembles Gucci’s "Bloom." [5]. Dossier thrives by offering similar fragrance experiences without the hefty price tag, appealing to budget-conscious consumers.
WHEN MIMICKING BECOMES YOUR USP, THE LEAST YOU CAN DO IS PAY ROYALTIES!
In trademark law, lack of distinctiveness and high similarity between rival marks are key factors in determining infringement. However, dupe brands exploit this very principle, leveraging the goodwill and reputation established by original creators. In fact, the closer they mimic an original product, the more successful they become, resulting in a paradox where the original brand suffers while the imitator thrives. This creates an ethical imbalance in the marketplace, highlighting the need for a system of mandated royalties. Firstly, trademark protections under the TMA, 1999 cover brand names and logos but do not extend to scents. This gap allows dupes to adopt similar branding or marketing strategies, often leading to consumer confusion and potential infringement on original trademarks. Implementing a royalty system would clarify the value of original creations, reduce market confusion, and reinforce the distinctiveness of original brands. Secondly, original perfume creators invest considerable time, expertise, and resources into developing unique scents. Their profits are often reinvested into research and development for new scents. When dupes thrive without contributing to this ecosystem, they undermine the incentive for further innovation, ultimately threatening the sustainability of the fragrance industry. Requiring royalties would ensure that original creators receive the financial support needed to maintain high standards and innovate further, promoting a healthier marketplace. Thirdly, many consumers are unaware of the extensive work behind fragrance creation. By mandating dupe brands to pay royalties, one can educate consumers about the value of original creations and promote ethical consumption. This would encourage dupe brands to innovate rather than simply replicate, fostering healthy competition that benefits consumers through improved product offerings. Similarly, this shift would enhance consumer appreciation for the artistry involved in fragrance creation, elevating the perception of dupes from mere cheap alternatives to products that honor the original creator's contributions and help drive the industry forward. As original creators continue to develop unique scents and dupe brands strive to differentiate themselves, consumers will enjoy a richer selection of fragrances that cater to diverse preferences and budgets, while also maintaining ethical consumption.
CONCLUSION & WAY FORWARD
While imitation may be viewed as a form of flattery, it poses a significant threat to the originality and exclusivity that high-end brands seek to uphold and protect. At the end of the day, dupes are replicas that rely heavily on the success of original fragrances. Therefore, there is a moral imperative for these brands to compensate the original creators. Establishing a legal obligation through a royalty system would recognize the original brand's investment in developing their creations and foster a more ethical business environment- ultimately benefiting both consumers and original creators.
CITATIONS & REFERENCES:
[1] Chanel’s Application, 31 October 1994, cited from Nathan K G Lau, Registration of Olfactory Marks as Trademarks: Insurmountable Problems? 16 SINGAPORE ACADEMY L. J. 264, 265 (2004).
[3] Calvin Klein Cosmetics v. Parfums de Coeur, 824 F.2d 665 (8th Cir. 1987)
[4] Sieckmann v. Deutsches Patent-und Markenamt, C-273/00, 2003 E.T.M.R. 37.
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