Unlike in Uganda, the fragrance industry is not new to the world economy. Many African countries, especially in the north where an Afro-Arab and Nubian culture exhibits a large population, have produced fragrances for centuries of years. Countries like Egypt, Tunisia, Morocco, Sudan, Mauritania etc. have segments of peoples skilled at mixing herbs for fragrances.
Uganda’s entrepreneurs are picking leaf and it will not be long before they require legal protection of their innovations, like perfume brands, which can be protected under trademark law. Some brands like Livara that use homegrown Shea butter scents are already on the market and maybe with trademark protection.
This article aims at educating the reader about the existing void in protecting fragrances under I.P laws.
The Trademark Act of Uganda
Branding requires creation of a specific mark or sign that can identify the product from other products on the market or not.
Section 1 of the Act defines a sign or mark to include ‘any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or any combination of them.’
Notice the element of, ‘…smell…’ in the above definition. An applicant may use this provision to apply for trademark protection of the fragrance of her product, but the test is still novice and subject to the registrar’s decision.
Section 4 of the Act also provides for the requirements of a trademark. The section describes these elements as ‘protectable subject matter’, as below:
‘A sign or combination of signs, capable of distinguishing goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’
Given the above description, a product must be easily distinguished from other products, whether in the same or similar business or not.
For instance, Omo and Nomi are two products in the soap industry. They both have familiar but equally distinct scents. What the consumer easily notices are the different names and logos. Their packaging may be similar, and the product is detergent powder, but consumers can differentiate the two products on the market.
The fragrance industry will also require this type of identification. It may be easy to tell which scent Chanel’s or Lancôme is or Livara but what will prominently distinguish these products is the branding/naming; and that is trademark protection under intellectual property law.
This means that despite the provision that a smell can be given a trademark; it must be accompanied by other factors like ‘word, symbol, slogan, logo, sound, [smell], colour, brand label, name, signature, letter, numeral or any combination of them’.
Where a sign is not inherently capable of distinguishing the relevant goods or services, qualification for registration shall depend on distinctiveness acquired through use.’
‘Use’ is relative. ‘Use’ is established by the time factor. For example, the aloe vera herb is used for a variety of things: balms, skin lotions, herbal juices, etc. If an innovator uses this scent to develop bicycle tires, our I.P system will have to rely on established court principles to grant or reject I.P protection.
For instance, the case of *Re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990) brought this factor clearly. In this case, the applicant sought trademark protection of its scented threads the applicant claimed its consumers easily identified by its scent. The applicant’s first request was denied. But the United States Trademark Trial and Appeal Board eventually accepted this argument that the consumers identified the applicant’s product by its scent.
A sign shall be capable of graphical representation to be registered.’
What this section does to trademark applicants is that it limits them to only things that can be physically seen and identified. That is why our trademark law requires signs, logos, names, etc. all visual manifestations of an innovator’s work.
This means that creators of fragrances will also be limited to packaging factors i.e. the shapes of their product bottles, the engravings on those product containers etc. and not the actual scents!
Meaning of ‘Distinctiveness’ of a mark
The term distinctive applies to the ease with which a consumer can differentiate the goods or services of the innovator from those of another.
Section 6 of the Act provides for this distinction. The section also leaves the rationale of distinctiveness to the registrar to decide. This means that an applicant must ably convince the registrar that the fragrance she is requesting protection for is solely different from those of any other known/unknown creator.
For the test of distinctiveness of a trademark, section 9 provides that the following must be present:
The name of a company, individual or firm, represented in a special or manner;
The signature of the applicant for registration or of some predecessor in his or her business;
An invented word or invented words;
A word or words having no direct reference to the character or quality of the goods or services, and not being according to its ordinary signification, a geographical name or a surname; or
Any other distinctive mark, but a name, signature or word or words, other than words within the description in paragraphs (a), (b), (c), and (d), shall not be registrable under this paragraph except upon evidence of its distinctiveness.’
Question: Can a fragrance creator apply for protection under copyright?
No. Not yet, at least.
Uganda’s copyright is developing steadily. However, there is no protection for smell in copyright.
Copyright protection is in the form of intellectual property where the creator’s works of original artistic, literary and scientific works are protected.
Looking at copyright and fragrances, the Dutch Supreme Court in 2006 created precedence the case of * Lancome Perfumes et Beaute et Cie S.N.C. versus Kecofa B.V. 45 IDEA 31 (2004-2005) when it ruled that scents that can be identified by the consumer to belong to the applicant/creator can be given copyright. But this point of jurisprudence will take a while to have effect in Uganda.
Copyright protection has always been for the things the consumer can touch, hear or see: not smell. If the product is packaged in something the consumer can see or touch, then that is what is given copyright protection. The ‘smelling’ bit of it has not been catered for except in trademark (see above).
Section 5 of Uganda’s copyright law spells out what work can be given copyright. Among many works, (f) on ‘works of applied art, whether handicraft or produced on industrial scale, and works of all types of designing…’ This section does not provide for fragrance protection. Perhaps this could be a new concept in our I.P laws.
NB: Our courts have not been faced with a case example on protecting a fragrance/scent itself yet, but we predict this to happen with the increasing number of beauty products.
The scents themselves may be difficult to protect under I.P laws but the brands that are registered and will have acquired some popularity on the market will require protection from dilution, counterfeiting and intellectual property violation.
What we also predict is that natural scents will not be protected for the exact purpose their natural use gives. If an innovator of, say, baby diapers uses a widely known local herb for baby baths to identify her creation and that the scent is still available for other innovators to use for their different products like car wash soap, that may be protected. But if that creation is ordinarily/traditionally linked to baby scents, then the application for trademark protection will fail.
While the works of a writer can easily be protected under copyright law, the scents will prove difficult to distinguish in the early periods of jurisprudence. However, we still predict that if the market becomes competitive and the consumers can identify a scent/fragrance with a certain product/creator/owner, courts will be forced to issue some sort of protection to the scent itself.
The law is a developing phenomenon.
BY ATUHAIRWE AGRACE
This article appears in our law newsletter Vol 2 Issue 1 of February 10th 2018. To receive The Deuteronomy in real time, click HERE