In the world of perfumes and fragrances, scents possess an undeniable ability to evoke emotions and memories. So, it may come as a surprise to those used to thinking of scents in such whimsical terms that, legally, scents are assets, protectible by trade mark registration. The need for this protection is highlighted by the increasing prevalence of fragrance “dupes”.

The Phenomenon of Perfume “Dupes”: Why are they Gaining Traction?

If you’ve been browsing the internet lately for the popular and strong Aventus Creed or the sophisticated and elegant Baccalaureat Rouge by Francis Kurkdijan, you might have come across numerous pop-up ads promoting brands such as “Alt Fragrances” or “Lazy Royal.” These brands contend to provide dupes that are more economical yet identical to your scent preferences.

In the fragrance industry, a differentiation is made between dupes and counterfeit fragrances.

• Counterfeit fragrances engage in illicit practices, pretending to sell the products of the well-known brands, but what they are selling is not actually the products of the well-known brand at all. It is a fake.
• Conversely, dupes derive inspiration from the fragrance of the well-known brand and precisely reproduce the aromas of this fragrance through reverse engineering and other chemical processes. The dupes are sold in distinctive packaging, with distinctive branding to distinguish the dupe from the product sold by the well-known brand. But, the catch is, that the dupes are marketed as affordable alternatives to the products of the well-known brands. The public readily identifies and accepts them as substitutes. But…they are undeniably riding on the coattails of the well-known brands, getting customers from the association they are drawing. These customers are potentially customers that would have purchased from the well-known brand. So, dupes result in huge financial implications to well-known brands.

Marc Chaya, CEO and co-founder of Maison Francis Kurkdjian, believes that the appeal of dupes arises from a lack of knowledge and understanding. Chaya explains that despite the fact that perfumery is regarded as a fine art, the extensive marketing campaigns promoting dupes has led to an underestimation of the creative perfumers behind the scents of the well-known brands, resulting in scepticism about whether the products of the well-known brands warrant their price point. In his view, marketing has acted as both “an exceptional developer and an exceptional destroyer of value in this industry.”[1]

Intellectual Property Implications

It is noteworthy that those engaged in producing dupes are not dubious fraudsters but astute business people who work within legally ambiguous zones of intellectual property law.

They have to artfully dodge violating copyright laws, designs, trade mark laws, the Australian Consumer Laws and the common law of passing off.

Copyright: The only scenario where copyright infringement might apply is if the dupe creators copy or reproduce the logos, labels, or advertising and promotional materials from the original perfume brands. As mentioned above, they do not. They use their own branding, packaging and marketing materials.

Designs: Some well-known brands may have registered their bottle shape as a design. But, again as mentioned above, dupe creators do not emulate the packaging of the well-known brands, and so would not normally infringe a bottle design registration, even if the well-known brands have registered their bottle shape as a design.

Trade marks:

1. Most well-known brands would have registered their house mark, product marks and logos as trade marks. Some would have also registered their bottle shapes as trade marks. Trade mark infringement of these registrations would require dupe creators to use branding and packaging that closely resemble those registered by the well-known brands. However, as mentioned above, dupe creators mostly use their own branding and packing, making the dupes appear as scent “duplicates” while preserving their individual brand identity. That is, the dupe brands themselves may be registered trade marks!
2. Some well-known brands may contemplate going a step further and registering the perfume scent as a trade mark. They could then sue the dupe creator for trade mark infringement of a scent trade mark. This would require the well-known brand to argue that the fragrance of the dupe is substantially identical or deceptively similar to the registered scent mark (i.e. the fragrance of the well-known brand). The irony is that this would amount to the well-known brand confirming to the general public that they consider the dupe  to be a close imitation. This would be a huge risk to the well-known brand, as it could thus encourage people to buy the dupe as they now have confirmation of it’s similarity to the fragrance of the well-known brand, at a lesser price!

This leaves the well-known brands with two options: passing off and misleading and deceptive conduct under Section 18 of the ACL. But the dupe creators head off these options, by being forthcoming about the dupes being imitations and ‘alternatives’. They are engaging in a practice known as comparative marketing, which is lawful provided the claims are substantiated and not misleading or deceptive to consumers.

On 15th March 2023, the High Court of Australia issued its decision in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8 (the ‘Protox vs Botox case’). Self Care Corporation Pty Ltd (‘Self Care’) had marketed their product, Protox, as a more cost-effective alternative to the renowned Botox products of Allergan Australia Pty Ltd (Allergan). The court unanimously decided that Self Care’s use of the “cheaper alternative to Botox” tagline, did not amount to trade mark use. Moreover, the High Court also ruled that the “cheaper alternative to Botox” tagline, was not a misleading representation about the efficacy of Protox as equivalent to a Botox injection. Further, in this case, the relevant ‘consumers’ for the purpose of determining whether the conduct was misleading or deceptive was determined to be people who were already familiar with Botox injections and were looking for an alternative. Thus, those people would not draw a connection between the Protox and Botox products, or mistakenly believe the “cheaper alternative to Botox” tagline implied a connection, affiliation or association between the Protox products of Self Care Corporation and the Botox products of Allergan. Once the relevant consumers were defined as such, the High Court had no problem in determining that the “cheaper alternative to Botox” tagline, would not misleading people into thinking Self Care had the sponsorship or approval of Allergen.

The fact that the consumers were deemed to be people who were already familiar with Botox, may have been influenced by the extent of Botox’ monopoly over the market. That is, the question or reputation may have come into play in the determination of misleading and deceptive conduct under the ACL and passing off at common law. This is an interesting twist, that may have flown under the radar, in a High Court decision that was hugely high profile, and set a buzz in the trade mark space, due to it reversing the previous legal position, from the Woolworths Metro case (that a well-known element in a trade mark renders it more distinguishable from other marks). Now, this High Court decision from the Protox vs Botox case said reputation was irrelevant for the purpose of determining deceptive similarity of trade marks. The IP Australia trade marks examiner’s manual had to be updated, examiners had to be re-trained. But, did anyone see that reputation had been made irrelevant for the purpose of trade mark registration and infringement, and had instead been seemingly introduced as a relevant consideration for misleading and deceptive conduct under the ACL and passing off at common law? How else, except with the reputation of Botox, would one expect that the relevant consumer of Protox would be people already familiar with Botox? I suppose it makes sense: Protox would not have chosen to use a comparative tagline unless Botox had a strong reputation. So, the irony is, that the greater one’s reputation, the more likely people are to be aware of the products, and thus the less likely consumers are to be confused by comparative advertising used on alternative products, making it easy for dupe creators to get away with something which is no doubt likening themselves to the well-known brand and benefiting from the association with the well-known brand. This is exactly what the laws of misleading and deceptive conduct and passing off are trying to prevent, but don’t seem to be able to. The Protox vs Botox case may have been a missed opportunity to rectify this.

Conclusion

In this legal landscape, dupe creators have the liberty to continue the somewhat dubious practice of riding on the coat tails of the well-known brands. But laws, particularly intellectual property laws, are continually evolving. If you are a dupe creator, it is important to understand that no one is immune to the law, and intellectual property disputes can have lasting negative effects.

At Tarr Law, we can assist you with any concerns you have regarding trade marks, copyright, misleading and deceptive conduct and passing off. If you have any questions about your intellectual property rights, please reach out to us at hayley@tarrlaw.com.au or 0477 914 319.

[1] Emily Jensen for Allure “Inside the Complex World of Fragrance Dupes” March 1 2023.