Luxury brand owners in the fragrance industry are facing increased challenges from the proliferation of two practices: (1) “smell-a-like” perfumes which mimic well-known scents, and (2) the repackaging and resale of fragrances through a process known as “decanting.” Both practices threaten to erode brand equity, confuse consumers and undermine the premium positioning of designer fragrances. Because these activities often stop short of explicit trademark infringement, policing such practices requires creative and multi-faceted strategies.

Smell-a-Like Perfumes

Smell-a-like products are typically marketed as “inspired by” or “similar to” famous designer fragrances. Increasingly, these products not only reference the designer scent but also adopt packaging and product names that closely resemble the originals, in an effort to capitalize on recognition of the designer fragrance and its attendant goodwill. In such cases, the designer’s trademark may not appear directly on the product but the intent to evoke the famous brand is clear.

Key Strategies:

• False Association Claims: Where direct trademark use is absent, brand owners can pursue claims of false association under the Lanham Act, arguing that the imitation of packaging, scent names and marketing language misleads consumers into believing there is an affiliation with the designer brand.

• Trade Dress Protection: Federal trade dress registration for distinctive bottle designs or packaging provides an additional basis for legal action, allowing brand owners to target lookalike products that mimic the overall appearance of the original.

• Trademarking Scent Names: Proactively registering individual fragrance names as trademarks strengthens the brand’s position in challenging copycat products.

Decanting: First Sale Doctrine and Quality Control

Decanting involves repackaging genuine designer fragrances, typically into smaller containers for resale. While resellers are permitted to use the designer’s trademarks descriptively to identify the product, and the first sale doctrine generally permits resale of products bearing trademarks, important limitations apply.

Key Considerations:

• Descriptive Use Limitation: Resellers are prohibited from using the mark in a way which implies any affiliation or sponsorship, though they are permitted to use trademarks in a descriptive sense, though no more than necessary to describe the product. Use of the designer’s imagery or emphasis on the brand in marketing will typically cross the line into false association.

• First Sale Doctrine Exception: The first sale doctrine does not shield resellers if the quality of the resold product is compromised. The decanting of perfumes often results in the degradation of the fragrance, resulting in tarnishment of the trademark, which designers may pursue through legal action.

In both the smell-a-like and decant contexts, sellers often fall far short of labeling and packaging regulations. Though such compliance issues may not provide brand owners with a direct cause of action, such violations may also provide an additional basis to bring infringers to the negotiating table.