Perfumes in trade marks28 October 2015
Trade marks for perfumes are as unique as they are important. They are different from other marks in that not only their final result is a non-material smell but also that requirements for their ability to be registered are specific, especially those with a foreign tinge.
This rationale may be exemplified by the fate of the trade mark application Tom Ford Neroli Portofino. This trade mark belonged to Thomas C Ford company, USA. It obtained an international trade mark registration under No 1163356 with priority of May 17 2013 in respect of goods in class 3 and wanted to extend it to Russia.
The Russian Patent Office initially rejected the application arguing that the word element "Portofino", being part of the claimed designation, is the name of a small Italian town in Genova province and could mislead the consumer with regard to the producer because the applicant is a US resident. The word elements "Portofino" and "Neroli" are non-protected elements because they point to the place of production of the goods and its properties (neroli is a vegetable oil widely used by perfume producers). It should be pointed out that examiners of the Patent Office should presumably be highly educated people because an ordinary Russian person would hardly link "Portofino" and even more "neroli" to any particular subject. If they delve into dictionaries and encyclopedias to dig out their knowledge, these findings should be used carefully in handing down their decisions specifically because their decisions should reflect the general level of awareness among target consumers.
The decision of the examiner was appealed by the applicant at the Patent Office. The Chamber of Patent Disputes re-examined the case and stated that the word designation
"Tom Ford", which is part of the claimed designation, is the name of the US designer and film producer. The word "neroli" exists in English, German and French and other languages and means an essential oil produced from the blossom of the bitter orange tree and used on a large scale in perfumery. The oil was introduced into use by Anne Marie Orsini, duchess of Bracciano and princess of Nerola (Italy). The major producers of oil are France, Italy and the US. Hence the designation "Neroli" should be regarded as indicating the composition of the substance in respect of which legal protection according to international registration 1163356 is sought. It is a non-protectable element according to the law and the applicant does not contest it.
It should also be noted that the claimed designation is used to label exclusive perfumes of the "Tom Ford" series known to Russian consumers. Considering that consumers are familiar with the perfumery products produced under Tom Ford and that the designation "Portofino" is a little known geographical denomination to the rank and file consumer (the supervising authority is less knowledgeable than a regular expert) there are few chances that the consumer will imagine that the perfume products come from Italy.
Besides, it was also pointed out that the claimed designation is a sequel to a series of trade marks with the word element "Tom Ford" which belong to the applicant and are protected in Russia including Tom Ford Shanghai Lily,Tom Ford Fleur de Chine, Tom Ford Bois Marocain according to international registrations 1135797, 1135796 and 986042 in which also aromas of foreign origin are present.
The spicy point in the trade marks of this category is that the consumer understands that the perfume is produced by a western company while the hint to another, exotic country will only elicit the idea of something special in that particular perfume.
Given those circumstances it was found possible to grant protection to the trade mark according to international registration 1163356 excluding from protection the word element "Neroli".