In the earlier post, we had discussed Sound marks as one of the unconventional marks. This post is a continuation of the previous post, where we will be discussing Smell marks.
Olfactory memory is the most unused mean to link a brand to consumers. The smell as the most potent type of human memory can potentially identify a product if it qualifies the criteria of a trademark. Smells have also the ability to recollect pictures and emotions and this may affect consumer’s attitude and decision marking to purchase particular products. It can be held that once distinctive, a smell is one of the most powerful manners to differentiate the goods of one merchant from those of the other.
Most would agree that smell marks are distinctive in nature: but can they be represented graphically? In addition, smells are highly subjective in nature as the smell of freshly baked cake may be appealing to many, but may raise a great negative response in some. When a smell or a scent is considered for registration, it means that others cannot use the same or similar kind of smell in respect of the same or similar goods or services; the need for clarity in defining the scope of protection is evident.
Chanel was the first enterprise which sought for the registration of its fragrance Chanel No.5 under the 1994 Act. The application for fragrance Chanel No.5 was rejected on the grounds of it being functional as it was the product itself. In the same way, the Unicorn Products and the Sumitomo Rubber Co. sought to register “the strong smell of bitter beer applied to flight darts” and “a floral fragrance/ smell reminiscent of roses as applied to tyres”, respectively. And both the applications were successful.
Protection of Smell marks in EU
At the level of EU, the Directive 2008/95/EC (TMD) and the Regulation 207/2009 (CTMR) regulate the trademarks.
Article 2 of the Directive and 4 of the Regulation lay down two requirements for a sign to be considered as a trademark.
- The sign must be capable of being represented graphically or in other words, must be visualized in two or three-dimensional form.
- The sign must be capable of distinguishing the goods/ services of one from the other, i.e. it must enable consumers to make distinction goods and services of one trader from that of the other.
The marks are conceptually registrable due to the non-exhaustive and broad definition of the trademark; so far the EU judges are restrictive in their approach for granting registration to non-conventional trademarks.
A landmark case determined by the ECJ is the case of Ralf Sieckmann v. Deutsches Patent und Markenamt. In this case, Mr. Sieckmann sought trademark protection in respect of his conglomeration of businesses. He represented the mark by denoting its chemical composition, giving the chemical formula, and specifying that samples could be found in local laboratories listed in the Dutch Yellow Pages. He also submitted a sample, stating that the scent was usually described as “balsamically fruity with a slight hint of cinnamon”
The application was rejected at various levels on the ground that it did not fulfill the requirement of Article 2. The preliminary ruling was essentially on whether smells were registerable and whether the stated methods of graphical representation were adequate.
In this case, the ECJ held that a sign which is not visually perceptible or in other words which are unable to be identified visually, if it possesses a distinctive character and can be represented graphically then it may qualify as a trademark. The ECJ decided that graphical representation per se is not enough for registration, and it must meet the following criteria:
- It must be complete, clear and precise, so that object of the right of exclusivity is immediately clear.
- It must be intelligible to those persons having an interest in inspecting the register, i.e. other manufacturers and consumers
Having laid down these criteria, the Court observed the following difficulties encountered in graphically representing smell marks:
- Representation as a drawing was unrealistic.
- Representation by chemical formula would not suffice, as the compound recipe speaks to the substance itself and not its scent.
- Further, representation by chemical formula needs clarity and accuracy, not just on account of the way that not very many individuals would have the essential specialized information to decipher the scent of a substance from its recipe, additionally attributable to the reason that the same substance would deliver diverse odors at distinctive temperature, fixation, and so on.
- Store of a substance’s example with the registry was not a viable option, since, firstly, it was not a graphical representation, and furthermore, scent being unstable may blur and even vanish over a timeframe.
In the aftermath of this case, the ECJ made the registration of scent marks practically impossible as argued by many scholars but not for others. Moreover, the lack of an internationally acknowledged classification system for scents renders impracticable the granting of a trademark without the smell complying with the Sickerman test.
Protection of smell marks In US
The protection of the non-conventional trademark in the US is loaded with some apprehensions shown by the U.S. Courts. Nevertheless, in addition to traditional marks, trademark rights can be created in Non-Conventional marks, as long as they fulfill certain requirements. In the United States of America, the Lanham Act provides for the protection and registration of trademarks at the federal level.
In 1990, the PTO first permitted registration of marks consisting of fragrance. That groundbreaking application was for a mark identified as “a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms,” which was used to identify sewing thread and embroidery yard. In its decision permitting registration of the fragrance, the Trademark Trial and Appeal Board instructed that registration was not permitted for scents or fragrances of products which were primarily sold for their scents, such as perfumes, colognes or household products; these types of scents would necessarily be functional. Additionally, the PTO has instructed that evidence required establishing the trademark significance of a scent is substantial.
Protection of Sound Marks in India
Unlike the case in US and EU, very few unconventional marks have received registration in India. Nonetheless, unlike the Trade and Merchandise Marks Act of 1958, the Trade Marks Act of 1999 (the Act) and the Trade Marks Rules of 2002 do refer to non-conventional trademarks
A reading of Sections 2(1)(zb) and 2(1)(m) of the Act shows that the definition of “trademark” has been widened to include shapes, packaging and combination of colours. Section 3 of the Draft Manual provides a definition of the trademark as including any mark as long as the mark is capable of being represented graphically and capable of distinguishing the goods or services of one person from that of the others. Nonetheless, it has been stated that colours, shapes, sounds and smells will require “special consideration” during registration.
In the context of scent marks, the Registry has again directly applied the Sieckmann test, stating that though smells are registrable, the fulfillment of the graphical representation criteria becomes difficult to post the Sieckmann holding. It is disappointing to note that the Registry has not suggested any alternative method of graphical representation in spite of stating that smells are registrable.
It is evidently clear that the minimum standard that is set for registration of sound marks is different in different jurisdictions. There is also a difference in the way such marks are treated at the desk at the time of registration. This is due to the fact that traditionally, the core expertise of all trademark offices has been in marks that consist of the visual element. Also for non-visual elements, there is no internationally recognized method for submitting the representation. This may be a major barrier to the acceptance of such marks. But on the other hand some jurisdictions have accepted such marks and validated them as potential marks but some have been virtually forgotten.
Chaudhary, Muhammad sarwar, Scope of trademark protection, available at http://lup.lub.lu.se/luur/download?func=downloadFile&recordOId=1555315&fileOId=1563618
 Chanel’s Application, 31 October 1994, cited from Nathan K G Lau, Registration of Olfactory Marks as
Trademarks: Insurmountable Problems? 16 SINGAPORE ACADEMY L. J. 264, 265 (2004).
 Sumitomo Rubber Co’U.K. Reg. No. 2001416/filing date Oct. 31, 1994.
 Unicorn Products U.S. Reg. No. 2,596,156, strawberry; 2,568,512, grape; U.S. Reg. No. 2,463,044, cherry.
 Directive 2008/95/EC of the European Parliament and the Council of 22 Oct 2008 to approximate the laws of the member states relating to trademarks( codified version), Official Journal L 299 of 8 Nov 2008
 Council Regulation (EC) No 207/2009 of Feb 2009 on the Community trademark (codified verison), Official Journal L78 of 24 Mar 2009.
 Ralf Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00, 12 December 2002, European Court
of Justice (hereinafter Sieckmann)
 Supra n 7 p 131
 Arka Majumdar, Subhojit Sadhu and Sunandan Majumdar, “The Requirement of Graphical Representability for Non-Conventional Trademarks”, JIPR 11 (5) 313-317 (2006)
 15 U.S.C. § 1051 – 1127
 Taj Kunwar Paul et al., Reincarnation of Trade Mark Law in India, 86 J. Patent And Trade Mark Office Society 237, 240 (2004).
 Supra at n 9
 “Mark” includes a device, brand, heading, lable, ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any combination thereof.
 Section 3, Draft Manual.
 Section 5.2.3, Draft Manual.
 Supra at n 7