‘We have a strong and profitable fragrance industry in the Auckland, with a growing international reputation for new creative brands, we should do all we can to encourage and support the industry by protecting new and existing talent. Having your original work copied or infringed is not tolerated in any other industry, why should perfume be any different’
Amanda Carr, Fragrance Trend Forecaster
The market for perfume ‘dupes’ has grown significantly and globally in recent years as gas chromatography-mass spectrometry, commonly referred to as GCMS, has helped open the once secret and exclusive world of scent creation.
As GCMS can accurately break down the complex chemical profiles of a perfume, formulators are now able to replicate the same combination of ingredients within a perfume in different proportions which has facilitated the rise of the dupe. Whilst GCMS is not yet advanced enough to pick up on all of the intricacies of a scent, for example, the exact proportion and blending of a scent’s notes and accords, it is creating a booming dupes industry, to the frustration of perfumers around the world (especially when a brand can market a dupe on the basis of such dupe being specifically inspired by a named fragrance).
Dupe scents have become popular as many original scents, it may be argued, are increasingly unaffordable. Dupe producers may argue that they are merely disrupting an unaffordable market by innovating.
The vast majority of consumers have historically owned and worn a signature scent, the same scent for every day and occasion, but in recent years, especially amongst later generations, there has been a marked shift towards having a fragrance wardrobe. Many consumers now regard perfume as a way to find their identity and evoke different feelings and moods – they want to explore. Dupes, on the basis of their affordability, are facilitating this exploration.
As in most (but not necessarily all) cases, with affordability comes issues. Quality and longevity may be compromised which is usually an important consideration for a purchaser. One of the most fundamental issues is of course the brand’s supply chain – its sustainability and the protection and rights of those working in it. These are well known issues in the fast fashion industry and seemingly, the fragrance industry is fast catching up.
It’s important to note that the affordability of dupes hasn’t been the only driver here. A lack of regulation in the industry has contributed greatly for example, brands can label their product as an Eau De Toilette or Eau De Parfum as they wish – a scent does not need a certain amount of fragrance oil for it to qualify for one or the other. There are of course many other drivers.
Dupe scents are, arguably, here to stay and as a result, in order to retain authenticity, Founder and CEO of Olfactive O, Olivia Da Costa, believes that the key is for fragrance founders to work hard at their story and to convince consumers that they’re investing in the totality of the brand, not just the scent.
Protecting IP
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 manufactures 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 No5 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 solely 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.
