Letters and Comment

Threats on French IP protection for perfumes!

Further to the article In the Courts: Perfumes as Artistic Expression?, here are updates on the situation following two recent decisions in France.

Perfumes have been in the spotlights of French IP practice since a decision by the Paris Penal Court of First Instance dated February 15, 2008. Kenzo Parfums, Lancôme, L’Oreal, Christian Dior Parfums, Yves Saint Laurent Parfums and many other perfume companies had sued several natural persons for trademark infringement for having offered fragrances shown as equivalent to their perfumes for sale. The fragrances were presented with announcements such as "If you like the X perfume, you will like my Y perfume" or "Ask for our list of similar perfumes with well-known perfumes". The Paris Penal Court decision in February considered that the sole reference made to well-known perfumes was insufficient to demonstrate the material element of trademark infringement.

This decision is in complete contradiction with the French Intellectual Property Code which prohibits unauthorized use, reproduction or affixing of a trademark even with the adjunction of wordings such as "formula, style, system, imitation, genre, method". The Court position also goes against established case law denying the concordance practice. So we hope this will remain an isolated case and that the appeal lodged by the plaintiffs will succeed.

The protection of perfumes under French copyright is also once again under debate. On June 13, 2006, the French High Court had decided that the creator of a perfume could not receive remuneration under copyright law. Since then, French case law had been ambivalent on whether copyright applies to perfumes. But on July 1, 2008, the French High Court reiterated its past position. The Court ruled that a fragrance only resulted from know-how and was not a creation eligible to copyright protection.

Excluding perfumes from copyright generates high risks in terms of defense policies. Fragrances are also very hard to protect through trademarks, therefore there is increased risk of counterfeiting, especially if, as a result of the above mentioned case law, the concordance practices is permitted. Hopefully, other French legal tools, such as unfair competition and specific protection for well-known trademarks, will remain enforceable.

From Franck...