Introduction

Copyright and other forms of intellectual property rights play an essential role in ensuring that creators of original works exert untrammeled control over their original works, and that third parties cannot recreate such works without the creator’s permission to do so, which incentivizes the creator of the original works  to make sustained contributions to the artistic and literacy areas. The creators of original works such as  music, movies, novels, computer programs are protected under Copyright, Designs and Patents Act 1988^[1] and EU directives.  However, when it comes to fragrance and other types of ‘non-conventional works’, the applicability of IPL protection is far from unequivocal. Thus, this essay will examine current legal framework of IPL laws pertaining to perfumes and determine the fitting legal treatment of such works.

The essay will zero in on the types of intellectual property rights afforded to perfumes, and fragrances. Having considered the available avenues for intellectual property protections to these works, the essay will proffer suggestions as to how make the current legal system- both on EU and UK level– more effective.

Trade Secrets

Trade secrets is a form of intellectual property which protects the know-how or business information pertaining to the manufacturing of a specific product or a service. Trade secrets can encompass a wide-ranging business know-how such as manufacturing processes, distribution and other pertinent business information^[2]. Misappropriation of such  trade secret and capitalizing on such a trade secret to derive economic value by a third party without the consent of the holder of the trade secret  can amount to unfair practice. Fragrance producers have long availed themselves of trade secrets to counteract third parties capitalizing on the knowledge about the ingredients to replicate the fragrance, since fragrance have long been barred from qualifying for a copyright[3]. Moreover, a report by International Fragrance Association underscores the importance of trade secrets to creators of fragrance in protecting their intellectual property, and determines  trade secrets as the most viable means to protect such.^[4]

The recent EU directive, Directive 2016/943^[5] has been commended by the advocates for IPL protection of fragrance and taste. The directive, enacted by the European Parliament and the Council, aims to harmonize the different national laws pertaining to the acquisition and exploitation of trade secrets within the EU. The EU directive has been touted as the catalyst for change in the legal treatment of trade secrets within the EU. Notwithstanding the Brexit, UK continues to be a Member State of EU, thus under obligation to implement the directive into its national law by an Act of the Parliament, effectively changing the current legal framework protecting the trade secrets in English common law. Under English common  law, laws pertaining to trade secrets are largely derived from case law. The law of trade secrets is derived from the seminal English case of  Faccenda Chicken v Fowler^[6], and are protected under the law of confidential information, while the English case of American Cyanamid Co (No 1) v Ethicon Ltd^[7] provides for remedies for breach of confidential information- passing off, injunction, freezing.Even though the Directive (EU) 2016/943^[8] has been commended as catalyst for an effective change in how trade secrets are legally treated on the EU level, such Directive might not be as effective as claimed in protecting fragrance and their creators. The article 3 of the DIRECTIVE (EU) 2016/943 emphatically provides that acquisition of a trade secret by such methods

are to be considered lawful, as opposed to unlawful. Since most third parties copying fragrances and gastronomy capitalize on reverse engineering, which can fall within the ambit of (b) of Article 3 of the  EU Directive^[9], the efficacy and viability of such measures at ensuring that fragrances and how they are developed are protected seems less and less certain, which calls for more robust IP protection to perfumes on the EU level. With the advent of the so-called reverse engineering, the efficacy of trade secrets in protecting the ingredients of fragrances has been diluted, to say the least^[10]. Reverse engineering is the process of copying another company by dissecting the product and learning about how it had been manufactured^[11].  Since reversing engineering can be defined as the observation or a study of a product or an object made available to the public, such provision unambiguously fails short of effecting a change that is favorable to the creators of fragrances.

Overall, trade secrets are the go-to IP protection used by the creators of fragrances. The issuance of the new EU directive-  Directive 2016/943^[12]– has been partially conducive to the harmonization trade secret laws, and regulations. However,  considering how the directive-  Directive2016/943^[13]– consider the  acquisition of a trade secret by (b) study (i.e. reversed engineering) as lawful, and the use of a trade secret acquired in such a way as lawful, the directive omits to provide adequate protections to the creators of ‘non-conventional’ works.

Therefore, the on the EU level, considering the vulnerability of the trade secrets of creators of fragrance, an updated directive has to be issued. On the UK level, matters related to trade secrets to protects fragrance and such works, are even more nebulous, which necessitates the overhaul of the laws as to trade secrets. With the transpositions (i.e. implementation) of the EU directive in UK legal system, such matters will be more crystallized.

Patents

Some proponents of the current legal treatment of non-conventional works espouse the use of patents as a way to protect the creators of the such works.  There is no denying that patents can be a feasible way of protecting inventions such as new technology. However, patenting as a way of ensuring intellectual property of fragrances tends to be overlooked by creators of fragrance and gastronomy works, and rightfully so.

Even though perfume formulas are key to replicating a particular scent, patenting a fragrance or other non-conventional works such as gastronomy can be quite onerous and taxing, discouraging the creators from  opting to patent which entails such obstacles^[14].

Furthermore, as often the case with  patenting, while attempting to obtain a patent, the creators of non-conventional works are obliged to detail the either the process or the techniques by which the product is either manufactured or developed. Such requirement is a substantial disincentive for the creators of non-conventional works, perfume creators in particular, in applying for a patent to protect their intellectual property.

In UK, matter related to patenting and as such are governed by the  Patents Act 1977^[15] and Patents Rules Act 2007^[16], which amended the Patents Act 1977. For  an invention to qualify for patentability under the Patents Act 1977, it must be new, and should entail an ‘inventive steps’ and should have an industrial application. Given the ambiguity involved within the requirements, courts have more of a latitude when interpreting the Act^[17]. Therefore,  the patentability of perfumes is far from unambiguous, which is a testament to the lack of IP rights fragrances enjoy.

Overall,  given the analysis of the advantages and disadvantages patenting entails, the idea patenting a fragrance to protect it from third-parties tends to be  less and less plausible, to say the least.

Trademark

Trademarks is another avenue of intellectual property for perfume producers.   The previous EU directive –Directive 2008/95/EC^[18]– provided that a trademark had to be ‘graphically representated’.  In  Sieckmann v. Deutsches Patent-und Markenamt^[19], the Court of Justice  held that a  “methyl cinnamate” scent did not qualify as a trademark.  The European Court of Justice held that the requirement of a graphical representability  was not fulfilled by the written description of a chemical formula or a deposit of the scent itself. The case proved to be a seminal one, effectively influencing the succeeding decisions, where sounds and scents were held not be eligible for trademark. However, with the enactment of the  EU Directive of (EU) 2015/2436^[20], trademarks do not necessarily have to be graphically represented, paving the way the for  fragrances to be trademarked. However, the efficacy of the new Directive has yet to be seen given how Member States have yet to  implement the Directive of (EU) 2015/2436^[21] into their own national laws. On the other hand, the US Trademark law allows for scents, and sounds to be trademarked, clearly illustrating how accommodating it is when it comes to such matters. However, as per the argument above, EU and UK courts are loth to allow scents to be trademarked.

Copyright for fragrances

Copyright-ability  of a work falls within the ambit of s3-s3 of the  Copyright, Designs and Patents Act 1988 (CDPA)^[22], where categories of work eligible for a copyright are set out. However, nor fragrance, nor creations of gastronomy fall within the remit of those categories, depriving the creators of such ‘non-conventional works’ the right to a copyright protection. UK,  just like other EU Member States, is under obligation to comply with the Berne Convention, which is considered by far the most important international convention concerning the intellectual property rights^[23]. Article 2 of Berne Convention for the International Protection of Literary and Artistic Works^[24] provides for  Moreover,  Article 2 (7) of the Berne Convention lends latitude to Union members in interpreting the Article (2), regardless of how it “every production in the literary, scientific and artistic domain, whatever the mode or form of its expression” Notwithstanding such working ,the recent decisions issued in EU suggest that copyright protection to perfumes is far from available, and is thoroughly contested.  The French Supreme Court, Cour de Cassation,  in the case of Bsiri-Barbir v Haarmann & Reimer^[25], held that perfumes did not enjoy copyright protection on grounds that ‘the scent of a perfume created through combination of essences is not a creation per se.  Hence, perfumes are not a form of expression as given under French copyright law’.  The court handed down such a decision on grounds that pursuant to Article L.112-1 of the French Intellectual Property Code^[26] ‘all works of the mind, whatever their kind, form of expression, merit or purpose’ can be copyrighted. The Supreme Court ruled that perfume of a fragrance was the result of an implementation of skill as opposed to a creation of a form of expression, which cannot be copyrighted.

Moreover, the French Supreme Court also held that Dior’s Dune perfume was not entitled to a copyright, since it was a mere implementation of a skill, confirming the decision handed down by the Court in the Bsiri-Barbir v Haarmann & Reimer. The ruling which outlawed copyright protection to perfumes in France was further corroborated in the case of Lancome v Modefine/Prestige^[27], where perfumes were held not to qualify for copyright protection, laying down a criteria whereby works could qualify for such copyright. Pursuant to the ruling, the objects (i.e works) have to have (i) concrete form which (ii) is identifiable and (iii) has sufficient distinctive character which can be communicated.  The case of Lancôme v. Farque^[28]  is also a key case worth considering while examining the IP laws as to fragrances and perfumes.  In Lancôme v. Farque^[29] , the the French Supreme Court also held that copyright could not be extended to perfumes, further corroborating how French courts are adverse to not granting scents and perfumes rights to copyright. Overall, the two cases discussed above suggest that IP protections for fragrances tend to be uncertain, which can be detrimental to the industry as a whole.

On the other hand, in the case of Loreal v Bellure^[30], the Court of Justice held that found that Bellure infringed L’oreal’s trademark by availing itself of lists in its advertisements which juxtaposed the scents of Loreal and Bellure. The Court of Justice ruled that Bellure had derived unfair advantage of a trademark as a result of an unlawful comparative advertising. Deriving unfair advantage from a reputation of a mark is contrary to Directive 84/450/EEC^[31], a EU directive directed to harmonize misleading advertising laws of Member States. Nevertheless, it is key to note that such ruling, which is seen by many as the catalyst for change in the legal treatment of perfumes, is largely derived from the Directive 84/450/EEC^[32], which deals with misleading advertising as opposed to IP of fragrances. Such ruling, although welcome, testifies to the lack of IP rights enjoyed by perfumes on EU level. Moreover, the Dutch Supreme Court’s ruling in the Lanceme v. Kecofa^[33] bodes well for those advocating copyright protection to non-conventional works, including perfume. The Dutch Supreme Court held that  the copyright of the perfume produced by Lancome- Trésor– was indeed infringed by Kefoca. The report, which was prepared by Lancome, found that Tresor and Kefoca’s Female Treasure shared 24 mutual olfactory component, while Tresor had 26 such components. The Dutch Supreme Court grounded its path breaking decision on the  Dutch Copyright Act, which provides for a exhaustive list of works which can qualify for copyright protection under the Act. The Dutch Supreme upheld the copyright-ability of scent and perfumes.

The analysis of the above IP laws pertaining to fragrance on both EU and English common law level,  and the cases –both EU, and English– suggest that there is a clear lack of IP rights that are conferred upon fragrance and types of non-conventional works. The below paragraph will present arguments as to why it makes sense to overhaul the IP laws pertaining to fragrances.

Reform

The cases analyzed above give credence to the argument that the current legal treatment of fragrances is far from perfect when it comes to protecting fragrances, and that fragrances  should enjoy IP rights, just like other works of creations do whether they are movies, music, or paintings. IP rights, as in other industry, play a key role in ensuring stability in the fragrance industry, and such importance cannot be overlooked. Therefore, to ensure that creators can create sustainable businesses in industries where non-conventional work drive innovation such as fragrance, more IP rights are sorely needed. Below presented are the arguments predicated upon the above analysis.

Firstly, today, the dynamics within the perfume industry has taken on an unprecedented change. Currently, manufacturing a perfume entails an intertwined relationships between suppliers, perfume houses and brands. Therefore,  the production of a fragrance entails information sharing between such parties, as to enable them to collaboratively work on the perfume. Such nature of the perfume production calls for the more robust IP protection to fragrance to ensure that creators keep investing in R&D, which ultimately benefits the end customer.

Secondly, considering how copyright protection is not readily available to the perfumes and fragrances,  and patenting is usually the least favorable avenue to protect perfume IP, trade secrets have to be made more robust. Trade secrets, as discussed above, remains the only viable currently available to creators of perfumes to protect their intellectual property pertaining to the know-how and olfactory components of their products.  However, with the Directive (EU) 2016/943^[34], their efficacy is far from unassailable because article 3 of Directive (EU) 2016/943 treats acquisition of such trade secrets by reverse engineering as lawful. Thus, the Directive (EU) 2016/943 exacerbates the vulnerability of perfumes to replication by other third parties without their permission, which is inimical to the market and the brands. To ensure that such a provision does not acts as an disincentive, trade secrecy laws on the EU level has to be reformed, allowing for more IP rights to producers of fragrance, which seems to be in line with the argument posited by Kimiya Shams^[35].

Overall, as asserted by the IFRA report^[36], reverse engineering has enabled other third parties obtain both commercial and technical trade secrets related to the production of a perfume. Reverse engineering, thus, offers them the ability to ascertain the ingredients of a perfume by simply dissecting and observing. The policy has to pay undivided attention to such problem and recognize its magnitude in further Acts and directives.

Conclusion

To conclude, the above presented cases and scholarly articles support the argument that the current intellectual property laws in place on both EU and UK level omit to provide effective protection to the non-conventional works such as fragrance. Considering how IP rights play a crucial role, it is suggested that both EU and UK should overhaul their trade secret laws to ensure that creators of fragrance are not unfairly disadvantaged.

The Table of Authorities

• Faccenda Chicken Ltd v Fowler and Others [1986] IRLR 69, CA
• American Cyanamid Co (No 1) v Ethicon Ltd [1975] UKHL 1
• C-273/00 Sieckmann v. Deutsches Patent-und Markenamt ECLI:EU:C:2002:748 [2002]
• C-487/07 L’Oréal SA a.o. v Bellure NV a.o [2009]
• Kefoca v Lancome No. C04/327HR JMH/RM
• Bsiri-Barbir v. Haarmann & Reimer Cour de Cassation, Paris, France (June 13, 2006) [2006] 28 E.C.D.R. 380
• Lancôme v. Patrice Farque. 1. 172. 30 April 2009
• Lancôme v. Modefine/Prestige Cour de Cassation, Paris, France (December 10, 2013)  [2013] 11-19872
• C-487/07 L’Oréal SA a.o. v Bellure NV a.o [2009]
• Copyright, Designs and Patents Act 1988
• Patents Act 1977
• Patents Rules Act 2007
• French Intellectual Property Code 1992
• Berne Convention for the International Protection of Literary and Artistic Works 1986
• Directive 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157
• Directive 84/450/EEC  of Council of 10 September 1984 relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising [1984]
• Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks [2008]
• Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks [2015]

Bibliography

• Margaret Dowie-Whybrow, Core Statutes on Intellectual Property 2017-18 (5th edn, Palgrave Core Studies 2017
• IFRA, Valuable Yet Vulnerable- Trade Secrets in the Fragrance Industry. Available at <ifraorg.org/view_document.aspx?docId=23340> accessed 30 December, 2017
• Charles Cronin, ‘Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress’ (2016) JIPEL, vol. 5. No. 1
• Leon Calleja, ‘Why Copyright lacks taste and scents’ (2013) Journal of Intellectual Property Law, vol. 21 no.1
• Christopher Stothers, ‘Patent Exhaustion: the UK perspective’ 16th Annual Conference on Intellectual Property Law and Policy Fordham University School of Law 27-28 March 2008 <http://fordhamipconference.com/wp-content/uploads/2010/08/Christopher-Sothers-Patent-Exhaustion.pdf> accessed 21 December, 2017
• WIPO, What is a Trade Secret <http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm?> accessed 01 January, 2018
• Cambridge Dictionary, Reverse Engineering <https://dictionary.cambridge.org/dictionary/english/reverse-engineering> accessed 01 January, 2018
• Kimiya Shams, ‘Op-Ed | Fragrances Should Qualify for IP Protection’ (2 July, 2014) <https://www.businessoffashion.com/articles/opinion/op-ed-fragrances-enjoy-ip-protection> accessed 27 December, 2017
• Chandler Burr, ‘Ahhh, the Seductive Fragrance of Molecules Under Patent’ (23 February, 2008) <http://www.nytimes.com/2008/02/23/business/worldbusiness/23perfume.html> accessed 21 December, 2017

^[1] Copyright, Designs and Patents Act 1988

^[2] WIPO, What is a Trade Secret <http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm?> accessed 01 January, 2018

[3] Leon Calleja, ‘Why Copyright lacks taste and scents’ (2013) Journal of Intellectual Property Law, vol. 21 no.1

^[4] IFRA, Valuable Yet Vulnerable- Trade Secrets in the Fragrance Industry. Available at <www.ifraorg.org/view_document.aspx?docId=23340>  accessed 30 December, 2017

^[5] Directive 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157

^[6] Faccenda Chicken Ltd v Fowler and Others [1986] IRLR 69, CA

^[7] American Cyanamid Co (No 1) v Ethicon Ltd [1975] UKHL 1

^[8] Directive 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157

^[9] Directive 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157, art 3

^[10] Charles Cronin, ‘Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress’  (2016) JIPEL, vol. 5. No. 1

^[11] Cambridge Dictionary, Reverse Engineering <https://dictionary.cambridge.org/dictionary/english/reverse-engineering> accessed 01 January, 2018

^[12] Directive 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157

^[13] Ibid.

^[14] Chandler Burr, ‘Ahhh, the Seductive Fragrance of Molecules Under Patent’ (23 February, 2008) <http://www.nytimes.com/2008/02/23/business/worldbusiness/23perfume.html> accessed 21 December, 2017

^[15] Patents Act 1977

^[16] Patents Rules Act 2007

^[17] Christopher Stothers, ‘Patent Exhaustion: the UK perspective’ 16th Annual Conference on Intellectual Property Law and Policy Fordham University School of Law 27-28 March 2008 <http://fordhamipconference.com/wp-content/uploads/2010/08/Christopher-Sothers-Patent-Exhaustion.pdf>  accessed 21 December, 2017

^[18] Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks [2008]

^[19] C-273/00 Sieckmann v. Deutsches Patent-und Markenamt ECLI:EU:C:2002:748 [2002]

^[20] Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks [2015]

^[21] Ibid.

^[22] Copyright, Designs and Patents Act 1988

^[23] Margaret Dowie-Whybrow, Core Statutes on Intellectual Property 2017-18 (5th edn, Palgrave Core Studies 2017)

^[24]  Berne Convention for the International Protection of Literary and Artistic Works, art. 2

^[25] Bsiri-Barbir v. Haarmann & Reimer Cour de Cassation, Paris, France (June 13, 2006) [2006] 28 E.C.D.R. 380.

^[26] French Intellectual Property Code, art L. 112-1

^[27] Lancôme v. Modefine/Prestige Cour de Cassation, Paris, France  (December 10, 2013)  [2013] 11-19872

^[28] Lancôme v. Patrice Farque. 1. 172. 30 April 2009

^[29] ibid.

^[30] C-487/07 L’Oréal SA a.o. v Bellure NV a.o [2009]

^[31] Directive  84/450/EEC  of Council of 10 September 1984 relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising [1984]

^[32] Ibid.

^[33] Kefoca v Lancome No. C04/327HR JMH/RM

^[34] Directive 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157

^[35] Kimiya Shams, ‘Op-Ed | Fragrances Should Qualify for IP Protection’ (2 July, 2014) <https://www.businessoffashion.com/articles/opinion/op-ed-fragrances-enjoy-ip-protection> accessed 27 December, 2017

^[36] IFRA, Valuable Yet Vulnerable- Trade Secrets in the Fragrance Industry. Available at <www.ifraorg.org/view_document.aspx?docId=23340>  accessed 30 December, 2017