Guest Post: The Smell Mark Conundrum

snowmen_carrotsNon-traditional trademarks, the rarity that they are, are always interesting to study. Kiran Mary George brings us a post on possibly one of the rarer of these rare breeds – Smell marks. After examining the Indian law, the post goes on look at the EU and US position as well. This is Kiran’s 2nd entry to our SpicyIP Fellowship applicant series. You can view her previous post on the iPhone v. iFon conflict here. [Readers interested in finding out more details about our SpicyIP Fellowship applicant series can click here.]

The Smell Mark Conundrum

Kiran Mary George

The fate of nontraditional trademarks and their registration has been the subject of interesting debate, with trademark registries all over the world finding themselves in a quandary over how exactly to tackle applications for the registration of sound, shape, smell, color, taste marks and what not. It being a relatively recent phenomenon, the absence of adequate precedent has given rise to ample intrigue surrounding the recently discovered arena of unconventional trademarks.

A rather interesting development in recent times has been the emergence of the olfactory or smell mark. In Indian law, trademark is defined under Section 2(1)(zb) of the Trademarks Act, 1999, as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others”. This definition is generic in nature – while not altogether eliminating the possibility of its inclusion; the definition does not seem to make room for the specific incorporation of non-conventional trademarks as a category either. This further becomes evident in the light of the fact that under Rule 25 (12)(b) of the Trademark Rules, 2002, an application for registration of a trademark mandates its graphical depiction, Rule 28 and 30 requiring that it be represented on paper, in a durable form. Like the sound mark, the olfactory mark also cannot be visually identified – thus, the mandatory requirement for graphical depiction may act as a significant impediment to the recognition of olfactory marks as a legitimate trademark in India.

In addition, it remains important to recognize that only in the presence of a medium that adequately describes the nature of smell/scent to be trademarked, can the very essence of the trademark – its distinctiveness – so be captured. Only when a graphical representation giving a clear, precise and objective image of the mark is made, can:

  • Section 29 of the Trademarks Act, 1999 – dealing with circumstances that constitute trademark infringement be effectively implemented by the Courts in a case of infringement, because there exists a medium of representation that permits an effective comparison of the warring trademarks,
  • Other traders be enabled to recognize with precision and clarity what products other traders carrying out a similar business, have already registered
  • The public identify the ‘smell’ that forms the essence of the product sought to be sold, especially in the case of products carrying indistinguishable scents, because then it is the label on the back describing the scent, so to speak, that enables them to make a choice.

In India, while there have been a few notable registrations of sound marks, the possibilities of the law recognizing a smell mark as a legitimate trademark have yet to be realized and explored, by both those affected by its absence, and the law itself. Sandalwood scents from incense sticks and jasmine fragrances from perfume oils might some day, find their way into being recognized trademarks, but only when trademark claims for smells are brought before the trademark registry, and Indian law is compelled to acknowledge the need to incorporate alternate forms of representation to facilitate the recognition of smell marks.

The EU opinion on the matter

Article 2 of the First Council Directive 89/104/EEC provides, ‘A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

A rather illustrative case is that of Sieckmann v German Patent Office (case C-273/00) where the European Court of Justice’s decision constituted one of the first steps taken towards attempting to put into perspective the entire matter of graphical representation of olfactory marks. The primary issue here was whether a scent, graphically depicted by the applicant as “balsamically fruity with a slight hint of cinnamon” would permit its registration as a smell mark.

The bench observed the various difficulties in the graphical representation of smell.

Firstly, its representation in the form of a worded description would remain subjective to a large extent, free to be interpreted differently by different people. To describe it with such clarity and precision that it is interpreted identically by every reader would prove to be a very difficult task. For instance, Courts may grapple with enforcing a scent described merely as “strawberry” or “peach”

The representation of the smell in a chemical form does not enable to be definitively identify the exact scent/odour emanated, on account of certain factors influencing its perception, such as temperature, concentration etc. Additionally, the technical knowledge it would require to interpret the formula to ascertain the smell itself is essentially unknown to the general public.

Thirdly, deposition of a sample may prove to be insufficient -the smell being volatile in nature often tends to change or even fade over time. Article 2 of Council Directive 89/104 holds that the representation so made must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The Bench’s 2002 landmark judgment accordingly held that although olfactory marks possess distinctiveness, clear, concise and objective graphical representation of the smell mark under the present law cannot be attained; smell marks thus not constituting trademarks within the definition of Article 2.

What the USA says

While the ECJ held back from giving olfactory marks legal recognition, the USA seems to be playing by different rules. Here, the Trademark Manual of Examining Rules provides for the registration of non visual trademarks incapable of being graphically represented, through a detailed description – the fallouts of which have been discussed earlier. In Re Celia Clarke, the Court accepted the registration of ‘a high impact, fresh floral fragrance reminiscent of Plumeria blossoms’ for sewing thread and embroidery yarn. The Court held that the scent, not being essential to or normally associated with the inherent nature of the product (unlike perfumes or deodorants) – with the applicant being the only producer of scented threads – both the tests of proving non functionality and distinctiveness under US law have been passed, leaving no reason for refusal to grant registration of the mark.

The decision however, is based on a limited recognition – a smell mark may only be registered where the scent acts as a mere source identifier, not being central or ‘functional’ to the product itself – thus, leaving much to be desired.

For olfactory marks to be recognized and and granted, the difficulties associated with the registration of smell marks, as observed in the Sieckmann decision must be analysed and resolved. While certain countries like the USA and UK partially allow the registration of smell marks, it excludes instances where the smell is quintessential to the product (as illustrated earlier). With trademark law in India modelled on the lines of the TRIPS agreement, it is highly unlikely for Indian law to take recognition of olfactory marks without significant international precedent to that effect.

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