Fragrance copying..is it ever illegal?

[beagledave]

I have a growing fragrance collection. It’s well know in the fragrance “community” that there are what can be best described as “clones” of famous fragrances.

There is no visual similarity and no advertising that suggests any linkage.

(For example, “Club de Nuit Intense Man” ($30 ish) is considered to be a clone of a much more expensive fragrance, Creed Aventus ($300-400 ish)

I know that the SMELL can not be trademarked in the U.S.

But what about fragrance copycats that visually are designed to say HEY I’m a copycat. Some will even have text like “Our interpretation of Fahrenheit” or something like that.

Original

Copycat

I’ve seen these kinds of things in retail shops as well. Are those kinds of copycats in violation of any trademark protection?

[Chronos]

If a bottle shape or label design or whatever is sufficiently distinctive, it can be trademarked. Any given fragrance maker might or might not have done so.

Of course, other legal protections are also, in principle, possible. A particular formulation, for instance, might possibly (though unlikely) be patented, and the equipment and other aspects of the process for producing it almost certainly will be. If the recipe is a trade secret, and another company gets ahold of it through corporate espionage, then it’s likely that someone violated a nondisclosure contract, and can be subjected to whatever penalties were agreed to in the contract. It’s conceivable even that a manufacturer might claim that a particular combination of aromas is a work of art, and try to claim copyright protection, though I doubt there’s any legal precedent for that being upheld.

[beagledave]

@Chronos

If a bottle shape or label design or whatever is sufficiently distinctive, it can be trademarked. Any given fragrance maker might or might not have done so.

If the recipe is a trade secret, and another company gets ahold of it through corporate espionage, then it’s likely that someone violated a nondisclosure contract, and can be subjected to whatever penalties were agreed to in the contract. .

Generally the copycat company is not using the same “recipe”, they’re using cheaper ingredients (for example, ambroxen instead of ambergris).

Yeah I guess I was going after the “look”. Fahrenheit, for example, has a rather distinctive look. The copycat bottle shape and color (and name) is obviously derivative.

[dofe]

@beagledave

But what about fragrance copycats that visually are designed to say HEY I’m a copycat. Some will even have text like “Our interpretation of Fahrenheit” or something like that.

@beagledave

Yeah I guess I was going after the “look”. Fahrenheit, for example, has a rather distinctive look. The copycat bottle shape and color (and name) is obviously derivative.

Courts consider allegations of trade dress (and trademark) infringement by looking at a multi-factor test that includes the distinctiveness of the original trade dress and the likelihood of confusion among consumers. That is to say that trade dress litigation is fact intensive and difficulty to predict from case to case.

Here’s a decision from Second Circuit describing some of the issues involved (though dealing with trademarks in this case) with the hypothetical in your original post:

@Second Circuit Court of Appeals

The appellees, Charles of the Ritz Group Ltd. (“Charles of the Ritz”), manufactures a fragrance called Opium. One of Deborah International Beauty, Ltd.'s (“Deborah International”) products, Omni, is not only similar in scent to Opium, but it also copies Opium’s trade dress and includes a direct reference to Opium in a slogan appearing on a tab which rises from the top of the box.

On May 30, 1986, Charles of the Ritz filed suit in the United States District Court for the Southern District of New York, pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982), seeking a preliminary injunction against Deborah International, charging that use of similar trade dress as well as the name Opium in the slogan on the top of the Omni box was likely to cause consumer confusion.

In a decision issued June 11, 1986, Judge Weinfeld, finding a likelihood of confusion in the use of the trademark Opium in Omni’s slogan but not in the similarity of trade dress, granted a preliminary injunction against the phrase, “If you like OPIUM, you’ll love OMNI.” Two months later, Deborah International moved for “clarification,” proposing a substitute, “If you like OPIUM, a fragrance by Yves Saint Laurent, you’ll love OMNI, a fragrance by Deborah Int’l Beauty.” On August 21, 1986, Judge Weinfeld rejected this suggestion in a second order. These orders were not appealed.

At issue here is a third version, “If You Like OPIUM, a fragrance by Yves Saint Laurent, You’ll Love OMNI, a fragrance by Deborah Int’l Beauty. Yves Saint Laurent and Opium are not related in any manner to Deborah Int’l Beauty and Omni.” This is essentially a combination of the August 1986 alternative and a disclaimer. On July 16, 1987, Judge Weinfeld agreed to enjoin use of this substitute but denied Charles of the Ritz’s motion to hold appellants in contempt.

We affirm the decision below for three reasons. First, a balancing of all the factors enumerated in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961), most of which were considered in the court’s earlier decisions, results in a finding of consumer confusion. Second, district courts must be given wide latitude in fashioning enforcement mechanisms for earlier injunctions. Third, Deborah International failed to introduce empirical evidence that the disclaimer actually lessens consumer confusion as required to overcome such a previous finding.

[beagledave]

@dofe

Courts consider allegations of trade dress (and trademark) infringement by looking at a multi-factor test that includes the distinctiveness of the original trade dress and the likelihood of confusion among consumers. That is to say that trade dress litigation is fact intensive and difficulty to predict from case to case.

Here’s a decision from Second Circuit describing some of the issues involved (though dealing with trademarks in this case) with the hypothetical in your original post:

That’s exactly the kind of thing that I was looking for. Thank you!

[Quercus]

Could a scent be a trademark (for a non-perfume company), similar to a color?

Let’s say a chain of tattoo-removal stores creates a distinctive smell of lemon, new-car smell, and some ammonia notes; and every store in the chain is full of scent-dispensers, letting everyone walking by in the mall that there’s a TAT2B-GONE location right there. Could they trademark that scent to prevent Ray’s Tat-Off from using the same smell?

(Not saying it’s a good idea, just wondering if it’s possible).

[dofe]

The parent company for Verizon has trademarked the use of a “flowery musk scent” for use in Verizon retail stores.