By, Shubhank Suman

The field of IPR, especially with regard to trademarks, has recently undergone a lot of development. However, there are still certain kinds of unconventional trademarks that are outside the existing trademark laws, both locally and internationally, due to their unusual nature. Olfactory mark is one such unconventional mark. Smell is considered as the most fundamental out of the five senses and means to “perceive the odor or scent of something through stimuli affecting the olfactory nerves”.[i] This produces images and inspires memories in the mind of a person, which plays an important role in a consumer’s decision while purchasing any product. However, despite its importance, it lacks a universal validation due to the unclear stand and non-uniformity in the legislations of different countries. The primary reason for such non-uniformity in the registration of olfactory marks is they are subjectively defined, and therefore, are open to interpretation.[ii] Consequently, the fate of olfactory marks and their registration has been the subject of numerous debates.

POSITION IN INDIA

In India, Section 2(1) (m) of the Trademark Act, 1999[iii] defines mark to include “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.” Here, though the term “smell” is not explicitly mentioned, it also does not eliminate the possibility of its inclusion. Section 2(1)(zb) of the Trademark Act, 1999[iv] further define trademark 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 and may include shape of goods, their packaging and combination of colors.” While rule 28 of Trademark Rules, 2002[v] defines graphical representation as such of being capable of represented in paper and digitized form. These definitions imply that any mark can be registered under the Trademark Act, 1999 if:

  • The mark is intrinsically distinctive.
  • The mark is capable of distinguishing one’s product from other’s products.
  • The marks can be graphically represented through paper.

In the case of olfactory marks this compulsory requirement for graphic representation is a major obstacle to its recognition as a valid trademark in India. It is also argued that, since the human perceptions of smell is subjective, the olfactory mark does not function as a trademark.[vi] Hence the law in India is yet to recognize the possibilities of olfactory marks as a legitimate trademark.

POSITION IN THE EU

Article 2 of the First Council Directive defines a trademark as, “A trademark 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”[vii] Hence, similar to India, EU also require graphical representation of mark through the paper. However, earlier In 1999, the Community Trade Mark Office in the case of Vennootschap Onder Firma Senta Aromatic Marketing v. Office for Harmonization in the Internal Market[viii] registered the “the smell of fresh-cut grass” as an olfactory marks of the tennis ball based on its distinct and verbal representation on paper. Later in the case of Ralf Sieckmann v. Deutsches Patent und Markenamt,[x] the European Court of Justice marked a monumental shift in the global jurisprudential history and study of olfactory marks. The court dealt with the question of whether a scent, verbally represented as “balsamically fruity with a slight hint of cinnamon”, would constitute a graphical representation as per Article 2 of the First Council Directive. The court held that representation that can not be identified by the sense of sight may also constitute a valid trademark if it has a distinctive character and can be represented through pictures, lines, and characters. However, in the present case, ECJ refused the registration of olfactory marks and observed that verbal representation through wordings and chemical formula are not clear and would be subjected to different interpretation by different people, and that valid graphical representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective[xi] The case set a firm precedent for the registrability of olfactory marks across the world that it would require the fulfilment of the sevenfold Sieckmann criteria.

POSITION IN THE USA 

In the USA Section 45 of the Lanham Act of 1946 defines a trademark as: “The term “trademark” “includes any word, name, symbol, or device, or any combination thereof”—

 (1) “used by a person, or”

 (2)”which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”[xii] This definition, unlike the definition in India and EU, does not require a graphical representation of the mark and allows registration of marks that are incapable of being graphically represented. This scope was further widened by the Supreme Court of the United States in the case of Clark, In Re,[xiii] which is considered as one of the most important precedents concerning the successful registration of olfactory marks. In this case, the registration of “a high impact, fresh floral fragrance reminiscent of Plumeria blossoms” as an olfactory mark for embroidery yarn was questioned. The court observed that the smell of the yarn is not associated with its inherent nature and also, since the applicant is the only producer of such threads, it passes both non-functionality and distinctiveness. Therefore, there existed no reason for the refusal of registration of the particular smell as a trademark.[xiv] The statutory and judicial views in the U.S. concerning non-traditional trademarks are perhaps the most liberal and inclusive in the world as far as admissibility and registrability are concerned.

TREATIES, CONVENTIONS AND OLFACTORY MARK

The TRIPS Agreement of 1995 which applies to all the 162 members of the World Trade Organization (WTO) is the first major agreement that defines trademarks before it all the conventions were related only to the registrability of trademarks. Section 2 of this agreement defines ‘marks’ as “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, however, members may require, as a condition of registration, that signs be visually perceptible[xv] From the definition, we can conclude that the Trips Agreement defines trademark on a functional basis, which neither expressly include nonconventional marks as trademark, nor completely excludes its possibilities to become trademarks. However, the last phrase of the definition that suggests that the member countries, through their domestic legislation, can require graphical representation for non-conventional trademarks, put an impediment in the form of graphical representation before non-conventional trademarks. Therefore, the Trips agreement, though widens the scope of non-conventional trademarks worldwide, does not provide a clear picture of the requirement of graphical representation of non-conventional trademarks including olfactory marks.

The Singapore Treaty on the Law of Trademarks, 2006 was another major treaty that defines a trademark and also its first provisions expressly recognize non-conventional trademarks as legitimate trademarks. This treaty focussed more on procedural aspects instead of substantive aspects and have mentioned the description required for the non-conventional mark to be provided in the application form for registration.

CHALLENGES OF SMELL AS TRADEMARKS

  • It has always been argued that the verbal representation of smell in the form of a worded description would be a substitute for graphical representation. However, worded description of smell to a large extent is subjective and is free to be interpreted differently by different people. It is a very difficult task to explain smell with such clarity and precision that every reader interprets it in the same way.
  • The representation of the smell in a chemical form can not describe the exact odor emanated from it as there are certain factors that affect odor perception, such as temperature, concentration, etc. In addition, it would be practically impossible for the general public to have the scientific expertise to interpret the formula to determine the scent.
  • Another challenge is that sample deposition can prove to be unsatisfactory sometimes as smell is volatile in nature and often changes or even fades with time.
  • Also, the total number of promising scents identified to the general public in written descriptions is limited.

CONCLUSION

In light of the above discussion, we can say that registration of olfactory marks across the world is a little bit ambiguous and at its infancy stage. Since the role of smell in marketing is at its zenith in today’s times, the scope of olfactory marks is needed to be tapped in order to cope up with the current realities. However, we should also not ignore the difficulties associated with the registration of olfactory marks, as observed in the Sieckmann decision. It must be properly analyzed and resolved. Though there are certain countries like the USA and Singapore that partially allow the registration of olfactory marks, they also exclude instances where the smell is quintessential to the product. Therefore, the need of the hour is to come up with uniform laws to clear the stand of the olfactory mark to avoid confusion and contradictory judgments.

[i] Sankalp-Keshav-Aditya, PROPERTY RIGHTS OVER FRAGRANCES, SMELLS AND PERFUMES PROTECTING  AROMA CREATION, (Aug 5, 2018), http://thelawbrigade.com/wp-content/uploads/2019/05/Sankalp-Keshav-Aditya.pdf.

[ii] Senthil Kumar, Smell Marks: The New Rage In Trademarks – Intellectual Property of India, (Sep 28, 2016),

 https://www.mondaq.com/india/trademark/530772/smell-marks-the-new-rage-in-trademarks.

[iii] Indian Trademark Act 1999,  Section 2(1) (m).

[iv] Indian Trademark Act 1999,  Section 2(1)(zb).

[v] Trademark Rules 2002, Rule 28.

[vi] Non-conventional Trademark-Smell marks, (Jun 30, 2017), https://www.bananaip.com/ip-news-center/non-conventional-trademark-smell-marks/.

[vii] Swaraj Paul Barooah, Guest Post: The Smell Mark Conundrum, (Jan 07,2015),

 https://spicyip.com/2015/01/guest-post-the-smell-mark-conundrum.html.

[viii] Ralf Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00.

[x] Vennootschap Onder Firma Senta Aromatic Marketing v. Office for Harmonization in the Internal Market, Case R 156/ 1998-2.

[xi]  Sankalp-Keshav-Aditya, supra note 1.

[xii] Tanusree Roy, REGISTRABILITY OF SMELL MARK AS TRADEMARK: A CRITICAL ANALYSIS, 4 10.

[xiii] Clark, In Re, 17 USPQ2d 1238, 1239 (TTAB 1990).

[xiv] Anupriya Dhonchak, Policy Questions Regarding Protection of Scent Marks, (Mar 6, 2020) , https://spicyip.com/2020/03/policy-questions-regarding-protection-of-scent-marks.html.

[xv] Sankalp-Keshav-Aditya, supra note 1.

Image source: Photo by Battlecreek Coffee Roasters on Unsplash