Olfactory Marks (Smell Marks)
Smell is a potent wizard that transports you across thousands of miles and all
the years you have lived-Helen Keller
Abstract
The main function of a Trademark is distinguished in three simple reason, i.e. to distinguish own goods from others, to know the origin of that goods or to signify the quality of that good.
Trademarks are the essence of the competition, the competition in the society for the goodwill and distinguishing characteristics. They make possible a choice between competition articles by enabling the buyer to distinguish one from the other. To protect trademark is to protect the public from deceit and to foster fair competition.
From the past times, Trademark is considered as an intangible asset, but the intangibility in Trademark is seen as a topic of discussion when topics like Smell and taste is taken into consideration.
The ever-increasing competition in the business world compels corporations and businesses to be distinct; to stand out in order to garner a larger consumer base. Apart from huge investments in advertising and attractive offers, the prime mode that they adopt is by way of trademarks.
A trademark is a sign of quality; it is an assurance that the product in question has emerged from a particular source. The more unique and popular the trademark, the more likely it is to attract consumers.
Now, in general parlance, a trademark is defined as a word, phrase, symbol and/or design that identifies and distinguishes the source of the goods of one party from those of others. However, it does not stop here.
Now in the modern time the topic of registering the SMELL of something is also seen, and moreover the Trademark of registering the perfect aroma of a particular thing is said to be an actual mark which constitutes all the functions of the Trademark and can eventually be registered. Thus, new precedents and challenges are seen for the acceptance and future growth of the same…
In India the need for registration of Smell, Sound and Taste are gradually increasing as the business needs to have a goodwill in all remains.
Introduction:
If you heard a familiar, comforting sound associated with a particular kind of tea, would you be more likely to choose it? How about the smell of freshly cut grass emanating from tennis balls – would they make you a winner? Or mint-flavored tennis balls for your dog – would fresher breath not be welcome? Marketing specialists would like us to think so, and these are only some of the subtle ways manufacturers get us to recognize their products. But just how far can trademark registration be stretched to protect these innovative ideas?
Smell is said to be one of the most potent types of human memory, and businesses show increasing interest in pairing pleasant scents with their products. To obtain registration of a smell mark applicants must be able to visually represent the product's scent and must show it is distinctive from the product itself. A bottled sample of the smell for example would decay over time and could therefore not be kept on a trademark register. But how does one represent a smell in a visual way? Writing down the chemical formula for a smell is problematic as it is deemed to represent the substance rather than the smell of that substance. Any written description of a smell must be so precise that that particular smell would not be confused with any other. Hence, the registration of a Smell Trade Mark is said to be a very hectic, time consuming and a non-assured part of trademark registration.
Despite the repeated use of these non-conventional marks in the global market, it lacks a universal validation owing to the existence of territory wise registration. But at the same time one of the most imperative changes has been introduced by these modern trademark forms in the present trademark law along with the constant struggle for the law makers to guarantee a balance between development intellectual property laws and technological improvements and that they are at par with one another. Trademark can be classified into two categories: conventional or traditional and non-conventional or modern trademarks. Trademark is, commonly, associated to words, names, symbols or some other sign utilized for recognizable proof of merchandise and services provided by one maker.
A small tour through trademark
Before diving in the Aroma, we should take a look at the provisions which tells us what is a Mark and what is a Trade Mark, and does the unusual Trade Mark of SMELL count in it or not.
The list of various kinds of marks included in the definition of a 'mark', although comprehensive enough to compromise any kind of symbol, is not exhaustive. This follows from the use of the expression mark includes in the definition of marks included under S.2(1) (m), which expresses as (mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof). Thus, the word 'mark' is a word in ordinary use; it is not a word of art and its construction is not limited by words which follows it in the statutory definition. It has many meanings according to the context in which it is used.
As said that mark must be used visually and not orally. Subject to this, it may be used in any kind of relation whatsoever to the goods, not necessarily a physical relation. A mark must be something distinct from the thing marked. A thing cannot be marked of itself[1] .
If we see the broad definition of mark which is linked with the trade name, A trade name is a term which includes individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturalist, and others to identify their business, vocation, or occupations, the names or titles lawfully adopted and used by persons, firm, associations, companions, unions and any manufacturing, industrial, commercial, agricultural, or other organizations engaged in trade or commerce and capable of suing and being sued in court of law.[2]
Bringing lights on the basic principles of trademark, provides three main functions of a trademark i.e. what types of marks should be included in trademark and should be eventually registered. It states: (1) Distinctiveness or distinctive character, or capable of distinguishing; (2) Deceptively similarity or similarity or near resemblance of marks and (3) Same description or similarity of goods. This the basic features of Trademarks and hence the scope of trademark is very large.
A Concept Of Non- Conventional (Traditional) Trademarks
In the modern era and with the advancement in the region of trademark, a wide region of trademarks has been seen nowadays which is secured under the heading 'non-traditional trademarks', cases being smell, sound, and taste and so on.
The term Non-Traditional trademarks pertains to those trademarks which do not fall under the ambit of the conventional definition of a trademark. These marks are not confined to words, symbols, name, device, packaging or combination of colors but extend to three dimensional marks, sound marks, motion marks, position marks, hologram marks, slogans, feel marks, smell marks and taste marks. Due to the dynamics with regards to the term 'trademark' many of such non-traditional marks has become widely accepted which has been reflected in many inclusive legislations and international treaties such as Agreement on Trade Related Aspects of Intellectual Property Rights. However, graphical representation of such nontraditional marks is an issue to be resolved.
Traditionally, trademarks are limited to words, logos or symbols that can be represented graphically in relation to any goods or services. The definition of a trademark under the Trade Marks Act, 1999 as per Section 2(zb) is trade mark means 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 colours. However, with the passage of time, not only logos, symbols or taglines are being associated to goods and services but also sound, taste, smell, texture, hologram, motion, shape and the ambience of the goods or services. Thus, when a mark goes beyond the realms of the traditional conventional category of being judged solely by the eye it is known as Non-Conventional Mark.
The Indian legislation has no specific provisions for Non-Conventional Marks except for the mention of sound marks. Under Rule 26(5) of the Trade Marks Rules, 2017 when the application has been made for a Sound Trade mark, it shall be reproduced in MP3 Format not exceeding a length of 30 seconds, recorded on a medium that allows for easy and clearly audible replaying quality along with a graphical representation of its notation. However, it is interesting to note that TRIPS too do not have provisions for Non-Conventional Marks. Article 15 of TRIPS states that Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Thus, from Article 15 it is clear that only those signs which are capable of representation are considered as trade marks
Types Of Non-Conventional Marks:
What is smell / and how is it even related to registration
What's in a smell? Smell is one of the five senses. Human mind reacts differently to smells. Smell is abstract and is often linked to abstract events such as smell of success or smelling a rat. 'Would a rose by any other name really smell as sweet?' - Shakespeare's Romeo & Juliet (2:2)
Intellectual property laws aim at dealing with technological innovations and to try and protect as much as possible the creation and the economic interests that are usually raised with such inventions. Accordingly, intellectual property laws offer three principle protections – patents for inventions, trademarks for signs that are capable of being represented graphically, and copyrights – for protection of literary, artistic and scientific works.
This is in sharp differentiation to the next four senses as they all invigorate region of the cerebrum, and require a conscious assessment to deliver a response. Thus, the feeling of smell has an extremely special and private control over what one does and how one lives. The term 'olfactory' traces its origin from medical science. Roof of each nostril is termed as nasal mucosa, a region that contains sensory epithelium called olfactory epithelium. The epithelium houses epithelial cell in form of pigment that absorbs radiations such as infrared and receptor cells that possess a knob above epithelial surface, from which extend 8-20 olfactory cilia. These cilia contain smell receptors. It can likewise be comprehended from the way that emotions, either constructive or contrary, about individuals, places and things, may well be dictated by how they smell, and this seems, by all accounts, to be so regardless of whether there is awareness of their odour
Smell marks have evolved as a result of manufacturers giving smells or scents to their products in order to make them distinct from other similar products. Olfactory sense is one of the most potent sense which is capable of registering itself in the human memory. However, as mentioned earlier, the registration of a smell mark has been enabled subject to the fulfilling of the condition that the smell is graphically represented. This condition is the vortex of the problem with regards to its registration. If such a smell is to be described then its description has to be so precise and accurate that it cannot be confused with any other smell. Also, the smell to be registered must not be arising out of the nature of the product itself.
International Conventions
It is undeniable that today's market economy is in the hands of the consumers hence manufacturers prefer to be associated with the consumers more closely than ever and to do so they prefer the nonconventional marks. In order to understand the international development in the trademark regime regarding smell as marks, the author has examined the locus of smell mark as a trademark in different countries.
However, this contention of the Petitioner was rejected on the grounds that he failed to associate the scent to the origin of the product and that the scent was not specified on its packaging. Aggrieved, the Petitioner preferred an appeal to the Trademark Trial Appeal Board (TTAB), wherein TTAB opined that a scent is very well capable of distinguishing a product from others. TTAB held that the Petitioners' product was the only yarn in market with a scent and advertised on the similar lines and that it has been associated to the origin of the products. Consequently, TTAB gave the yarn a trademark registration reasoning that a unique scent is a prima facie case for distinctiveness of its mark.
The judgement given by TTAB in In re Clarke was acknowledged by the US Supreme Court in Qualitex Co. v Jacobson Prods. Co .wherein the court observed that:
Scent marks can be affixed directly to or infused into the product, like the Plumeria Blossom-scented yarn or hypothetical raspberry scented upholstered furniture, or could even be affixed as a scratch-and-sniff or scented card.[4] Therefore, it could be said that smell marks are qualified to registered as a trademark in the USA and is permissible owing to the coupled effect of the judicial decisions and the statutory provisions.
Though the United States Patent and Trademark Office lets you trademark a scent, few have taken them up on the offer. Millions of conventional trademarks (logos, slogans, etc.) have been registered, but the government's filings on their olfactory counterparts could barely fill a three-ring binder.
The U.S. Patent and Trademark Office uncovered only 10 active registered scent trademarks which are as follows:
2. United Kingdom:
The UK trade mark regime is predominantly governed by the Trade Marks Act 1994, and is largely harmonized the EU trade mark law. Section 1 of this Act defines a trade mark as:
any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
United Kingdom trade mark law provides protection for the use of trade marks in the UK. A trade mark is a way for one party to distinguish themselves from another. In the business world, a trade mark provides a product or organisation with an identity which cannot be imitated by its competitors.
Trade Marks in United Kingdom are governed by the United Kingdom Trademarks Act, 1994. The day the UK TMA came into existence, Chanel tried to register smell mark as a trademark for its product 'Chanel No 5' and attempted to represent the smell mark graphically by describing their perfume as, 'The scent of aldehydic-floral fragrance product with an aldehydic top note from aldehydes, bergamot, lemon and meroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk.
The scent also being known by the written brand name No.5.'[5] This application as unsuccessful as perfume was not only the smell mark but the end product in its finality and could not be considered as an indicative of the origin of the product. Therefore, it was denied on the grounds as it was unsuccessful on account of lack of indication of its origin.
Similarly, in Myles Limited's case[6], the registrability of 'the scent of raspberries' with respect to fuels, including motor fuels, particularly diesel as heating fuel, fuel and engine fuel was in question. The scent was denied registration on the ground that even though it could be represented graphically, it lacked distinctiveness as an attribute.
Again, in Sieckmann v Deutsches Patent-und Markenamt[7] case, 'the smell of balsamically fruity with a slight hint of cinnamon' was not considered as registrable as it was found to be unobvious to the average consumer. This case did not consider and ruled out written descriptions, chemical formulas, samples, electronic sensory analysis and graphic profiles as a means of identification of the smell. Thus, this case onwards, the registrability of smell marks as trademarks have come to a halt given its precedential value.
But the things took turn and followed by the successful registration of a floral fragrance similar to roses as applied to tyres by Sumitomo Rubber Co and smell of beer applied to flights for darts by Unicorn Products. As on the same day, two more application were made to register scent as a trademark whereby Sumitomo Rubber Co. pitched scent of 'floral fragrance reminiscent of roses as applied to tyres'[8] and Unicorn Products pitched the scent of 'the strong smell of bitter beer applied to flights for darts'[9] as a trade mark for their end products and both of them were granted registrations.
Later, In John Lewis's case[10], scent mark of 'the smell, aroma or essence of cinnamon' was sought to be registered as a trademark in relation to furniture products. It was denied registration by the Principal Hearing Officer as he reasoned that an individual's perception of would vary depending on the circumstances, that the scent could not stand just by itself as it lacked definition and that it was not precise enough so as to eliminate any sorts of confusion which might arise due other similar smells.
Even in the case of the UK the problem was with the graphical representation of the marks similar to the case of ECJ. Graphical representation is not only necessary for recording and publishing the mark but also to allow the concerned parties to determine extent of existing trademark rights by running a search of trademark register.
The Principal Hearing Officer in a case of registration of the smell or aroma of cinnamon in respect of furniture highlighted the difficulty in registration of smell marks by stating that a man's view of the scent is probably going to be affected by the conditions in which they have been valued. Apart from graphical representation, it is important that the mark is not lacking of unique character as was stated by the OHIM Third Board of Appeal in another such case. Since an olfactory mark is incapable of being perceived visually, it raised a question as to whether an olfactory mark cannot be a subject matter of trademark in any capacity.
The answer to this question was dealt with for the first the first time in the case of Sieckmann v Deustsches Patent-und Markenamt[11] before the European Court Of Justice. The ECJ emphasized on the graphical representation of the mark rather than on visual perception. But at the same time the ECJ decided that graphical representation per se is not enough for registration, and it must fulfill 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.
Therefore although in UK the registrations of olfactory marks is very much allowed and open in theory but the reality of practice is quite the opposite especially in regard to the Sieckmann as descriptions in writing, chemical formulas, samples, electronic sensory analysis have been struck down by the courts.
3. Europe:
The European Community Mark (ECM) is alternative and compliment to trade-mark registration in individual European Union countries. Similar to Lanham Act, a wide definition of trademarks has been acknowledged by the EU directive and is unable to address scent marks clearly. The ECM provides protection for a trade-mark meeting the ECM registration requirements for the entire market within the European Union.
The objective of the ECM is to allow applicants to file one trade-mark application for the entire European Union, removing the need for applicants to register trade-marks separately in each European Union member state. According to the regulation governing ECMs, an ECM may consist of any signs capable of graphical representation that are capable of distinguishing the goods or services of one business from those of another. Signs which do not conform to these requirements cannot be registered.
Previously, the graphic representation requirement for European Community scent marks was satisfied by a written description of the scent employed in the mark. This changed with the recent European Court of Justice (ECJ) decision in Sieckmann v. Deutsches Patent-und Markenamt.
In Sieckmann, the Applicant sought registration of the compound methyl cinnamate as a scent mark in association with classes 35, 41 and 42 of the Nice Agreement on the International Classification of Goods and Services for the Purposes of the Registration of Marks. The Applicant described the mark in his application as the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester). The trade-mark application also included the chemical structure of methyl cinnamate, a description of methyl cinnamate's scent, and a scent sample.
In 1999, the Community Trade Mark Office (CTM) contemplated whether the scent of fresh cut grass could be registered as a trademark for tennis balls. Initially, the application was refused on the ground that the words the smell of fresh cut grass did not qualify as an adequate graphical representation of the mark capable of depiction in a shape or form as required by Article 4 of the Community Trade Mark Regulation. On appeal, the Board of Appeal decided that the scent of fresh cut grass is a distinct scent known to, and recognizable by, the majority of the population from experience, and thus that the mark's description was appropriate for registration.
The refusal of the registration of a balsamically fruity smell with slight hint of cinnamon by the European trademark registries raised two questions to the ECJ:
The ECJ interpreted Article 2 of the CTMR as denoting that a ECM may consist of a sign which is not in itself capable of being perceived visually, provided that the sign can be represented graphically by images, lines or characters and that the representation of the sign is clear, precise, self-contained, easily accessible and durable. The Court ruled that requirements of graphic representation for scent marks are not satisfied by one, or any combination of the following: the scent's chemical formula, a description of the scent in written words, or deposit of a scent sample.
Some of the trade mark register offices in Europe, e.g. the UK Register Office, the Uniform Benelux Register Office, the German Patent- und Markenamt or the OHIM had to deal with applications on olfactory trade marks in the recent past. Only a few of those applications have been successful so far.
As already mentioned above, it started out with three applications of smell trademarks to the UK Register Office on 31st October 1994, the day of the enforcement of the Trade Marks Act.
If we see conventions regarding Smell Marks in Europe:
To conclude, only a few olfactory trademarks have been registered since the new provisions that were implemented according to the Directive 89/104 EEC came into force. Apart from the 'perfume' cases that cannot be registered because of the requirement that the smell shall not result from the nature of the good itself, the graphical representation of the smell still provides the most difficulties.
4. Australia:
Scent marks are explicitly registrable under sections 7 and 17 of the Australian Trade Mark Act of 1995. Section 17 defines a trade mark as a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person, while section 6 defines a sign as including scent. A search of the Australian trade-mark register at the time of writing indicates that there is one scent mark application currently being examined, while five scent mark applications have lapsed and therefore remain unregistered.
It is possible that representing a scent mark by the scent's chemical formula in Australia may constitute deception under section 43 of Australia's Trade Marks Act 1995, as the chemical formula of a scent does not represent the odour of the compound used in the scent mark, but the compound itself.
The amended Trademark Act of New Zealand made a noteworthy change in the statutory provision in regards to the definitions of the term trademark wherein the word sign includes a brand, color, device, heading, label, letter, name, numeral along with smell, sound, taste etc. Through this article it has been established that protection of smell marks in New Zealand is granted through both statutory provisions and judicial decisions.
Thus, an application for scent mark registration describing the scent mark in terms of chemical formula can be potentially rejected on the basis of the mark description. Given this potential for rejection, in the absence of a ruling by the Australian trade-mark authority, it is advisable to represent a scent mark in words, not chemical structures. Such a representation could include the chemical name of the scent, or description of the scent mark's fragrance.
5. Nations who don't want to smell the trademarked Scents:
Brazil
The only marks that can be registered in Brazil are visually perceptible signs. Therefore, scent marks cannot be registered under Brazilian trade mark law.
China
Article 8 of Chinese trademark statute restricts registered trademarks to visible symbols. Therefore, scent marks are not registrable in China.
Mexico
Article 88 of the Mexican Industrial Property Law states that only visible signs may be registered as trademarks. Therefore, scent marks do not qualify for trademark registration in Mexico.
6. India:
In India the trademark has some essentials, Essentials requirements of a trade mark The definition given in the Act is very wide. Briefly stated, a trade mark is a visual symbol used in relation to any goods or services to indicate some kind of trade connection between the goods or services and the person using the mark.
In order to bring it within the scope of the statutory definition, a trademark should satisfy the following essential requirements:
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 addition, in accordance with Rule 25 (12)(b) of the Trademark Rules, 2002, an application for trademark registration mandates its graphical depiction while Rule 28 and 30 requires that it be represented on paper, in a durable form. Therefore, this requirement acts as a significant impediment to the recognition of olfactory marks as a legitimate trademark in India.
Definition of Trademark under the Indian law is not quite different from the previous international treaties. It neither includes nor expressly excludes the registrability of nonconventional trademarks. Even though it is open to interpretation, the definition of mark doesn't involve any non-conventional trademark but the Draft Manual issued by the Trademark Office provides for special consideration for certain non-traditional trademarks. When it comes to the consideration two questions are usually raised. One being the degree to which the standards applicable to traditional trademarks adapt unconventional subject matter and secondly where there is the presence of gaps in the existing law.
The problem with registration of non-traditional marks like smell marks is that it cannot be represented graphically. However, the Indian Judiciary broke the conventionality by granting protection to the manufacturers of Zippo lighters on the basis of the shape of its Lighters to keep its counterfeiting in check. Further, the boundary was pushed wherein Yahoo! Registered its sound under the Indian Trade Mark Act, 1999.
Later, in the year 2009, the Trade Mark office came up with a Draft Manual which gives the non-traditional marks distinct concern and entails certain provisions with deal with the same. As of now, the provisions of the Draft Manual have not been incorporated into the Indian Trade Mark Act, 1999. Consequently, the registration of smell marks as a singular trade mark have not seen their road to finality.
The primary reason for such a low registration of smell marks is because they are defined subjectively and are therefore open to interpretation. The complications that arise from human perceptions of odours lead to the argument that subjective views are inadequate when determining whether the smell mark functions as a trademark. Further, smell trademarks are arguably one of the most difficult types to represent graphically.
VI. Findings Of The Courts
As regards to chemical formulae as the United Kingdom Government has rightly noted, few people would recognize in such a formula the odour in question. Such a formulae is not sufficiently intangible.
The question whether the mark was capable of being represented graphically was referred to the European court of justice which held as follows:
As to the deposit of an odour sample it does not constitute a graphic representation for the purpose of directive. Moreover, an odour sample is not sufficiently stable or durable.
Accordingly, in respect of an olfactory sign, the requirements of the graphic representability are not satisfied by a chemical formula by a description in written words, by the deposit of an odour sample or by a combination of those elements.
Advantages Of Scent Mark Registration
The battle for including olfactory signs for both commercial purposes, and importantly, for use by the disabled is a new concept which the world is yet to give a serious thought to. Nevertheless, if one day, smelling trademarks could be viewed from the human rights perspective and used by the blind or the deaf (who cannot hear the sound trademarks) to identify their required goods, it would be a giant leap for humanity. Till then, I would hope that we don't turn up our noses but allow the scent in the air to reach our humane senses. Once this step is complete, rest assured, it will have a permanent mark, because, haven't you heard, scent has the strongest effect on our memory.
VII. Disadvantages/Critiques
While scent marks appear to be an innovative way to distinguish goods and services, there is a strong case against the ability of scents to function as reliable indications of trade source.
Scientific research on the human sense of smell indicates the highly subjective nature of odour perception undermines the ability of scents to act as objective and reliable indications of source. This not only prevents scents from functioning as trade-marks, but also subverts reliable judicial administration. Universal preferences for certain scents will also deplete the limited number of desirable scents available for scent marks, resulting in scent mark depletion.
We can criticize the smell marks by two ways:
Depletion doctrine is readily applicable to scent marks as there are cross-cultural preferences and aversions to smells. Shared cultural scent preferences mean there are relatively few desirable scent marks to be shared among traders. Granting a scent mark registration for one of these marks will deplete the pool of desirable scent marks, reducing competition. Further, the international nature of trade-mark registration means that a scent mark registration in one country has the potential to deplete the available pool of scent marks in other countries. Given universal human preferences for certain odors, a scent mark registration in one country potentially depletes the pool of marks both nationally and internationally. This reduces competition on a local and global scale.
The fourth, and most serious, inability of scents to function as trade-marks impacts the reliability of judicial administration. The subjective nature of smell will unavoidably affect how the trier of fact perceives the evidence in a scent mark infringement case. This will result in unpredictable outcomes in scent mark litigation. While flexible, as opposed to strict, judicial administration may be more just in some instances, the highly subjective nature of scent perception means that litigants will truly be entering a lottery system when they proceed to trial for scent mark actions. The end result is neither flexible nor strict judicial administration, but arbitrary results that will deleteriously impact scent mark litigation.
VIII. Challenges Faced by Our Scents to Get Registered
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.
Protection of 'smell' as trademark has been a long-debated topic. Although various countries have laid down specific provisions in regard to the protection of smell marks, nevertheless the standards laid down by different countries are in conflict with each other. Some arguments in favor of protecting smell marks highlight the fact that the role of scent in today's product is not restricted to sell but also extends to distinguish the product. Also, it plays an active role in establishing a long duration odor memory. While arguments in against focuses on consumer's access to product's scent before they purchase. It speaks of the likelihood of confusion among consumer and the difficulty to differentiate without expert aid.
In spite of the recognition gained by smell marks from various countries, it still lacks backing of strong legal provisions and development is needed in this branch of law. With more countries establishing provisions for the registrability of smell marks a clear contradiction can be seen between the standards laid down for the same by the countries. Where on one hand countries like Australia and Europe depend on the Sieckman test, the United States trademark law is guided by the Qualitex ruling of the Supreme Court.
The most basic challenge faced by a smell mark is the consumer's accessibility to the smell before purchasing the product. If not then the basic purpose of the smell to act as a trademark is defeated because the purchaser has to wait to smell its scent till the product is put to use at home. This way he cannot connect the odor with the origin and hence his decision won't be influenced at the time of the purchase.
Another difficulty which usually arises in case of smell marks is that even though a consumer recognizes the smell or finds it familiar, he may not be able to connect the smell with the identity of the product or manufacturer on a consistent basis. Regardless of whether an item's aroma operates as a root identifier, the producer looking to shield that mark from infringement must have the capacity to show that comparative fragrances may amount to likelihood of confusion.
Also, the total numbers of scents of promising character which are known to the mass public through a written description are limited. Therefore, registration of specific scents should not be allowed to evade depletion of the supply of scents available for use by others.
Similar aroma mixes, just like similar colours can be hard to recognize without expert help and when it comes to smell marks it proves to more difficult and burdensome than colour marks in case of the practical difficulties faced in its administration.
Conclusion
Taste marks may be easier to represent graphically – the SCT reports that the graphic representation requirement was satisfied by using a written description of the taste and an indication that it concerns a taste mark – but the hurdle of distinctiveness is even harder to overcome as are assertions concerning functionality.
Scent marks appear to be an innovative and catchy way for traders to market their goods and services. However, an equally strong cae made that scent marks pose a significant dilemma for trade-mark law. The difficulties in representing scent marks in trade-mark registries, the inability of scent marks to function as stand-alone identifiers of trade source, the subjective nature of scent perception, and scent depletion theory ultimately combine to undermine the utility of scent as trade-mark.
It is often difficult for traders to represent such marks in the trademark registries, it lacks the basis to perform as the sole identifier of the source or origin, the theory of smell depletion and also the fact that smell or scent is subjective in nature and it changes and depends from person to person and so different consumer may perceive it in a completely different way based on their opinion. All these together works in a negative way sometimes and challenge the functionality and efficacy of smell marks as trademarks.
The comparative analysis of trade-mark regimes at the beginning of this paper highlights that the future of scent marks is uncertain. No international treaty mandates the registration of scent marks. In fact, some treaties, such as Trademark Law Treaty, explicitly state the terms of the treaty do not apply to scent marks. Regarding national laws, some jurisdictions are more tolerant of scent marks than others.
For example, the Australian trade-mark statute now expressly contemplates scent mark registration, and jurisdictions (e.g. Japan) that previously forbade scent marks are now silent on the issue of registrability.
The Sieckmann ruling has created a contradictory situation in Europe with respect to registration of scents under the European Community Mark (ECM) system. ECM applicants are not barred from applying for scent registrations, but simultaneously do not have readily apparent, acceptable methods to describe scent marks on trade-mark applications. Meanwhile, there are jurisdictions whose laws are silent on the registration of scent marks, such as Canada, and a number of countries (e.g. Brazil, China and Mexico) which forbid scent mark registration.
While it is uncertain whether scent marks will become more commonplace and more widely accepted for trade-mark registration within individual jurisdictions, a lack of uniformity re scent mark registrations may have deleterious effects on national economies. Because scent marks are currently very rare, it remains to be seen whether these marks are merely a passing marketing fad or may, in some cases, become some of the most commercially valuable marks of the future.
Thus in conclusion it can be said that it is a fact that the way products smell can be a huge determining factor in individual's life but lack of graphical representation and arbitrary and random nature of smell or scent can sometimes pose a risk in case of registration of a smell mark but a balance between the utilization of technology by various Trademark Offices of different countries and founding jurisprudence of trademark, the lacuna present in process of protection of smell marks can be erased.
End-Notes:
Abstract
The main function of a Trademark is distinguished in three simple reason, i.e. to distinguish own goods from others, to know the origin of that goods or to signify the quality of that good.
Trademarks are the essence of the competition, the competition in the society for the goodwill and distinguishing characteristics. They make possible a choice between competition articles by enabling the buyer to distinguish one from the other. To protect trademark is to protect the public from deceit and to foster fair competition.
From the past times, Trademark is considered as an intangible asset, but the intangibility in Trademark is seen as a topic of discussion when topics like Smell and taste is taken into consideration.
The ever-increasing competition in the business world compels corporations and businesses to be distinct; to stand out in order to garner a larger consumer base. Apart from huge investments in advertising and attractive offers, the prime mode that they adopt is by way of trademarks.
A trademark is a sign of quality; it is an assurance that the product in question has emerged from a particular source. The more unique and popular the trademark, the more likely it is to attract consumers.
Now, in general parlance, a trademark is defined as a word, phrase, symbol and/or design that identifies and distinguishes the source of the goods of one party from those of others. However, it does not stop here.
Now in the modern time the topic of registering the SMELL of something is also seen, and moreover the Trademark of registering the perfect aroma of a particular thing is said to be an actual mark which constitutes all the functions of the Trademark and can eventually be registered. Thus, new precedents and challenges are seen for the acceptance and future growth of the same…
In India the need for registration of Smell, Sound and Taste are gradually increasing as the business needs to have a goodwill in all remains.
Introduction:
If you heard a familiar, comforting sound associated with a particular kind of tea, would you be more likely to choose it? How about the smell of freshly cut grass emanating from tennis balls – would they make you a winner? Or mint-flavored tennis balls for your dog – would fresher breath not be welcome? Marketing specialists would like us to think so, and these are only some of the subtle ways manufacturers get us to recognize their products. But just how far can trademark registration be stretched to protect these innovative ideas?
Smell is said to be one of the most potent types of human memory, and businesses show increasing interest in pairing pleasant scents with their products. To obtain registration of a smell mark applicants must be able to visually represent the product's scent and must show it is distinctive from the product itself. A bottled sample of the smell for example would decay over time and could therefore not be kept on a trademark register. But how does one represent a smell in a visual way? Writing down the chemical formula for a smell is problematic as it is deemed to represent the substance rather than the smell of that substance. Any written description of a smell must be so precise that that particular smell would not be confused with any other. Hence, the registration of a Smell Trade Mark is said to be a very hectic, time consuming and a non-assured part of trademark registration.
Despite the repeated use of these non-conventional marks in the global market, it lacks a universal validation owing to the existence of territory wise registration. But at the same time one of the most imperative changes has been introduced by these modern trademark forms in the present trademark law along with the constant struggle for the law makers to guarantee a balance between development intellectual property laws and technological improvements and that they are at par with one another. Trademark can be classified into two categories: conventional or traditional and non-conventional or modern trademarks. Trademark is, commonly, associated to words, names, symbols or some other sign utilized for recognizable proof of merchandise and services provided by one maker.
A small tour through trademark
Before diving in the Aroma, we should take a look at the provisions which tells us what is a Mark and what is a Trade Mark, and does the unusual Trade Mark of SMELL count in it or not.
The list of various kinds of marks included in the definition of a 'mark', although comprehensive enough to compromise any kind of symbol, is not exhaustive. This follows from the use of the expression mark includes in the definition of marks included under S.2(1) (m), which expresses as (mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof). Thus, the word 'mark' is a word in ordinary use; it is not a word of art and its construction is not limited by words which follows it in the statutory definition. It has many meanings according to the context in which it is used.
As said that mark must be used visually and not orally. Subject to this, it may be used in any kind of relation whatsoever to the goods, not necessarily a physical relation. A mark must be something distinct from the thing marked. A thing cannot be marked of itself[1] .
If we see the broad definition of mark which is linked with the trade name, A trade name is a term which includes individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturalist, and others to identify their business, vocation, or occupations, the names or titles lawfully adopted and used by persons, firm, associations, companions, unions and any manufacturing, industrial, commercial, agricultural, or other organizations engaged in trade or commerce and capable of suing and being sued in court of law.[2]
Bringing lights on the basic principles of trademark, provides three main functions of a trademark i.e. what types of marks should be included in trademark and should be eventually registered. It states: (1) Distinctiveness or distinctive character, or capable of distinguishing; (2) Deceptively similarity or similarity or near resemblance of marks and (3) Same description or similarity of goods. This the basic features of Trademarks and hence the scope of trademark is very large.
A Concept Of Non- Conventional (Traditional) Trademarks
In the modern era and with the advancement in the region of trademark, a wide region of trademarks has been seen nowadays which is secured under the heading 'non-traditional trademarks', cases being smell, sound, and taste and so on.
The term Non-Traditional trademarks pertains to those trademarks which do not fall under the ambit of the conventional definition of a trademark. These marks are not confined to words, symbols, name, device, packaging or combination of colors but extend to three dimensional marks, sound marks, motion marks, position marks, hologram marks, slogans, feel marks, smell marks and taste marks. Due to the dynamics with regards to the term 'trademark' many of such non-traditional marks has become widely accepted which has been reflected in many inclusive legislations and international treaties such as Agreement on Trade Related Aspects of Intellectual Property Rights. However, graphical representation of such nontraditional marks is an issue to be resolved.
Traditionally, trademarks are limited to words, logos or symbols that can be represented graphically in relation to any goods or services. The definition of a trademark under the Trade Marks Act, 1999 as per Section 2(zb) is trade mark means 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 colours. However, with the passage of time, not only logos, symbols or taglines are being associated to goods and services but also sound, taste, smell, texture, hologram, motion, shape and the ambience of the goods or services. Thus, when a mark goes beyond the realms of the traditional conventional category of being judged solely by the eye it is known as Non-Conventional Mark.
The Indian legislation has no specific provisions for Non-Conventional Marks except for the mention of sound marks. Under Rule 26(5) of the Trade Marks Rules, 2017 when the application has been made for a Sound Trade mark, it shall be reproduced in MP3 Format not exceeding a length of 30 seconds, recorded on a medium that allows for easy and clearly audible replaying quality along with a graphical representation of its notation. However, it is interesting to note that TRIPS too do not have provisions for Non-Conventional Marks. Article 15 of TRIPS states that Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Thus, from Article 15 it is clear that only those signs which are capable of representation are considered as trade marks
Types Of Non-Conventional Marks:
- Sound Marks
Sounds have a big impact on how consumers perceive a brand. With the growth of e-media, sounds play a big role in identifying a product or service thus adding value to the brand. A sound mark is a mark where the sound is used to perform the function of uniquely identifying the commercial origin of products and services. Sound marks function as source indicators when they assume a definitive shape and arrangement and create in the minds of the listener an association of the sound with a good or service. Yahoo's Yodel is the first sound trademark to be registered in India. Some of the famous sound marks registered in USA are the sound of the famous Tarzan yell, the lion roar of Metro-Goldwyn-Mayer Corporation, the music consisting of drums, trumpets and strings in the Twentieth Century Fox Films, the sound of the crowd and the bell of New York Stock Exchange, McDonald's Corporation's five-note I'm lovin' it jingle.
- Smell Marks
When the source identifier of goods is a smell, then it is termed as Smell Mark. Smell Marks are a lot tougher than sound marks to be registered because they lack any form of representation.
- Hologram Mark
Holography is a photographic technique that records the light scattered from an object, and then presents it in a way that appears three-dimensional. A hologram is a cross between what happens when you take a photograph and what happens when you look at something for real. Like a photograph, a hologram is a permanent record of the light reflected off an object. But a hologram also looks real and three-dimensional and moves as you look around it, just like a real object. That happens because of the unique way in which holograms are made.
- Motion Mark
A motion mark is moving animated object or logo which is used by a company as a marketing strategy to gain a customer base. A motion mark is made by using computer programs and software along with animation techniques.
- Taste Marks
Taste marks are easier to be represented graphically as the written description of the taste can be used to indicate the taste of the goods. However once again, the challenge lies in functionality. A trademark for the taste of pizza or pasta cannot be granted as it inherently performs the function of making the same- i.e. adding flavor to the dishes. Thus, we see thousands of chefs making dishes with the same ingredients and with no or hardly any changes. Any product meant for human consumption may inherently disqualify for taste protection under trademark given the functionality doctrine. Two notable applications for registration of taste mark came before the European Union Intellectual Property Office (EUIPO) and the United States Patent And Trademark Office (USPTO) but both of them ended up being rejected. Till date, no application for having a taste mark registered have come before the registry.
- Trade Dress
Trade dress is the overall look and appearance of a product or packaging that signifies the source of the product to the buyer. One of the classic examples of trade dress is the visual appeal of a Coca Cola bottle. The shape of the bottle, the red label along with the red cap all comprise of trade dress. In short, trade dress is the overall look and feel of the product.
What is smell / and how is it even related to registration
What's in a smell? Smell is one of the five senses. Human mind reacts differently to smells. Smell is abstract and is often linked to abstract events such as smell of success or smelling a rat. 'Would a rose by any other name really smell as sweet?' - Shakespeare's Romeo & Juliet (2:2)
Intellectual property laws aim at dealing with technological innovations and to try and protect as much as possible the creation and the economic interests that are usually raised with such inventions. Accordingly, intellectual property laws offer three principle protections – patents for inventions, trademarks for signs that are capable of being represented graphically, and copyrights – for protection of literary, artistic and scientific works.
This is in sharp differentiation to the next four senses as they all invigorate region of the cerebrum, and require a conscious assessment to deliver a response. Thus, the feeling of smell has an extremely special and private control over what one does and how one lives. The term 'olfactory' traces its origin from medical science. Roof of each nostril is termed as nasal mucosa, a region that contains sensory epithelium called olfactory epithelium. The epithelium houses epithelial cell in form of pigment that absorbs radiations such as infrared and receptor cells that possess a knob above epithelial surface, from which extend 8-20 olfactory cilia. These cilia contain smell receptors. It can likewise be comprehended from the way that emotions, either constructive or contrary, about individuals, places and things, may well be dictated by how they smell, and this seems, by all accounts, to be so regardless of whether there is awareness of their odour
Smell marks have evolved as a result of manufacturers giving smells or scents to their products in order to make them distinct from other similar products. Olfactory sense is one of the most potent sense which is capable of registering itself in the human memory. However, as mentioned earlier, the registration of a smell mark has been enabled subject to the fulfilling of the condition that the smell is graphically represented. This condition is the vortex of the problem with regards to its registration. If such a smell is to be described then its description has to be so precise and accurate that it cannot be confused with any other smell. Also, the smell to be registered must not be arising out of the nature of the product itself.
International Conventions
It is undeniable that today's market economy is in the hands of the consumers hence manufacturers prefer to be associated with the consumers more closely than ever and to do so they prefer the nonconventional marks. In order to understand the international development in the trademark regime regarding smell as marks, the author has examined the locus of smell mark as a trademark in different countries.
- United States of America:
In the USA, the trademark is governed by the Lanham Act which protects those trademarks and the rights of its holders. The Lanham Act, which was enacted in 1946 and embodies federal trademark law, recognizes that traditional marks — any word, name, symbol, or device, or any combination thereof that could indicate the origins of a product or service — are eligible for protection if used in commerce. The statue did not expressly state whether a trademark can take the form of colors, smells, and sounds. Section 45 of the Lanham Act, 1946 defines trademark as, The term trademark includes any word, name, symbol, or device or any combination thereof:
- used by a person, or
- which a person has a bona fide intention to use in commerce and applies
to register on the principal established by this Act, 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.
The said definition does not denote any kind of information to scent marks, smell marks or olfactory marks, but future the mentioning of trade dress was included in the case of Two Pesos, Inc. v Taco Cabana which confronted the trade dress to include size, shape, color or color combinations, texture, graphics, or even particular sales techniques within itself. Further in Harward law review it was held in the article to define trade dress as Here, it is pertinent to mention that 'trade dress' includes Sensory marks such as smell or color. Hence, the area of acceptance of Smell trademark was eventually increased significantly in US.
The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial in the US. In order to overcome this requirement of substantial evidence, the applicant has to establish two primary things:
- Proving non-functionality: A feature is functional if it is
essential to the use or purpose of the goods, or, if it affects the cost or
quality of the product. If a product feature is functional, it cannot be
protected as a trademark, even with proof of secondary meaning. The
functionality doctrine seeks to prevent trademark law from inhibiting
competition, by allowing a trademark owner to control a useful product
feature. Therefore, if an applicant can show that the scent acts as a source
identifier without performing any other significant function, the scent is
likely pass the non-functionality test.
- Proving distinctiveness: A nonfunctional scent mark may be registered on the Principal Register, but only with proof of acquired distinctiveness. As mentioned above, the amount of evidence needed to establish acquired distinctiveness of a scent mark is substantial. If an applicant is unable to demonstrate that a scent has acquired distinctiveness, the scent can be registered only on the Supplemental Register. After a scent mark has existed for five or more years on the Supplemental Register and additional evidence of acquired distinctiveness has been obtained, the registrant may file a new application for registration of its mark on the Principal Register.
- Proving non-functionality: A feature is functional if it is
essential to the use or purpose of the goods, or, if it affects the cost or
quality of the product. If a product feature is functional, it cannot be
protected as a trademark, even with proof of secondary meaning. The
functionality doctrine seeks to prevent trademark law from inhibiting
competition, by allowing a trademark owner to control a useful product
feature. Therefore, if an applicant can show that the scent acts as a source
identifier without performing any other significant function, the scent is
likely pass the non-functionality test.
However, this contention of the Petitioner was rejected on the grounds that he failed to associate the scent to the origin of the product and that the scent was not specified on its packaging. Aggrieved, the Petitioner preferred an appeal to the Trademark Trial Appeal Board (TTAB), wherein TTAB opined that a scent is very well capable of distinguishing a product from others. TTAB held that the Petitioners' product was the only yarn in market with a scent and advertised on the similar lines and that it has been associated to the origin of the products. Consequently, TTAB gave the yarn a trademark registration reasoning that a unique scent is a prima facie case for distinctiveness of its mark.
The judgement given by TTAB in In re Clarke was acknowledged by the US Supreme Court in Qualitex Co. v Jacobson Prods. Co .wherein the court observed that:
Scent marks can be affixed directly to or infused into the product, like the Plumeria Blossom-scented yarn or hypothetical raspberry scented upholstered furniture, or could even be affixed as a scratch-and-sniff or scented card.[4] Therefore, it could be said that smell marks are qualified to registered as a trademark in the USA and is permissible owing to the coupled effect of the judicial decisions and the statutory provisions.
Though the United States Patent and Trademark Office lets you trademark a scent, few have taken them up on the offer. Millions of conventional trademarks (logos, slogans, etc.) have been registered, but the government's filings on their olfactory counterparts could barely fill a three-ring binder.
The U.S. Patent and Trademark Office uncovered only 10 active registered scent trademarks which are as follows:
| Sr. No. | Name | Reg. No. |
| 1 | Flowery Musk Scent (Verizon Stores) | 4618936 |
| 2 | Bubble Gum Scent For Sandals | 754435 |
| 3 | Piña Colada Scent To Coat Ukuleles | 4144511 |
| 4 | The Coconut Smell That Fills Flip Flop Stores. | 4113191 |
| 5 | Rose-Scented Marketing Products | 3849102 |
| 6 | Minty Pain-Relief Patches. | 3589348 |
| 7 | Strawberry Toothbrushes | 3332910 |
| 8,9,10 | Strawberry, Cherry, And Grape Lubricants For Combustion Engines | 2568512, 2596156, 2463044 |
2. United Kingdom:
The UK trade mark regime is predominantly governed by the Trade Marks Act 1994, and is largely harmonized the EU trade mark law. Section 1 of this Act defines a trade mark as:
any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
United Kingdom trade mark law provides protection for the use of trade marks in the UK. A trade mark is a way for one party to distinguish themselves from another. In the business world, a trade mark provides a product or organisation with an identity which cannot be imitated by its competitors.
Trade Marks in United Kingdom are governed by the United Kingdom Trademarks Act, 1994. The day the UK TMA came into existence, Chanel tried to register smell mark as a trademark for its product 'Chanel No 5' and attempted to represent the smell mark graphically by describing their perfume as, 'The scent of aldehydic-floral fragrance product with an aldehydic top note from aldehydes, bergamot, lemon and meroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk.
The scent also being known by the written brand name No.5.'[5] This application as unsuccessful as perfume was not only the smell mark but the end product in its finality and could not be considered as an indicative of the origin of the product. Therefore, it was denied on the grounds as it was unsuccessful on account of lack of indication of its origin.
Similarly, in Myles Limited's case[6], the registrability of 'the scent of raspberries' with respect to fuels, including motor fuels, particularly diesel as heating fuel, fuel and engine fuel was in question. The scent was denied registration on the ground that even though it could be represented graphically, it lacked distinctiveness as an attribute.
Again, in Sieckmann v Deutsches Patent-und Markenamt[7] case, 'the smell of balsamically fruity with a slight hint of cinnamon' was not considered as registrable as it was found to be unobvious to the average consumer. This case did not consider and ruled out written descriptions, chemical formulas, samples, electronic sensory analysis and graphic profiles as a means of identification of the smell. Thus, this case onwards, the registrability of smell marks as trademarks have come to a halt given its precedential value.
But the things took turn and followed by the successful registration of a floral fragrance similar to roses as applied to tyres by Sumitomo Rubber Co and smell of beer applied to flights for darts by Unicorn Products. As on the same day, two more application were made to register scent as a trademark whereby Sumitomo Rubber Co. pitched scent of 'floral fragrance reminiscent of roses as applied to tyres'[8] and Unicorn Products pitched the scent of 'the strong smell of bitter beer applied to flights for darts'[9] as a trade mark for their end products and both of them were granted registrations.
Later, In John Lewis's case[10], scent mark of 'the smell, aroma or essence of cinnamon' was sought to be registered as a trademark in relation to furniture products. It was denied registration by the Principal Hearing Officer as he reasoned that an individual's perception of would vary depending on the circumstances, that the scent could not stand just by itself as it lacked definition and that it was not precise enough so as to eliminate any sorts of confusion which might arise due other similar smells.
Even in the case of the UK the problem was with the graphical representation of the marks similar to the case of ECJ. Graphical representation is not only necessary for recording and publishing the mark but also to allow the concerned parties to determine extent of existing trademark rights by running a search of trademark register.
The Principal Hearing Officer in a case of registration of the smell or aroma of cinnamon in respect of furniture highlighted the difficulty in registration of smell marks by stating that a man's view of the scent is probably going to be affected by the conditions in which they have been valued. Apart from graphical representation, it is important that the mark is not lacking of unique character as was stated by the OHIM Third Board of Appeal in another such case. Since an olfactory mark is incapable of being perceived visually, it raised a question as to whether an olfactory mark cannot be a subject matter of trademark in any capacity.
The answer to this question was dealt with for the first the first time in the case of Sieckmann v Deustsches Patent-und Markenamt[11] before the European Court Of Justice. The ECJ emphasized on the graphical representation of the mark rather than on visual perception. But at the same time the ECJ decided that graphical representation per se is not enough for registration, and it must fulfill 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.
Therefore although in UK the registrations of olfactory marks is very much allowed and open in theory but the reality of practice is quite the opposite especially in regard to the Sieckmann as descriptions in writing, chemical formulas, samples, electronic sensory analysis have been struck down by the courts.
3. Europe:
The European Community Mark (ECM) is alternative and compliment to trade-mark registration in individual European Union countries. Similar to Lanham Act, a wide definition of trademarks has been acknowledged by the EU directive and is unable to address scent marks clearly. The ECM provides protection for a trade-mark meeting the ECM registration requirements for the entire market within the European Union.
The objective of the ECM is to allow applicants to file one trade-mark application for the entire European Union, removing the need for applicants to register trade-marks separately in each European Union member state. According to the regulation governing ECMs, an ECM may consist of any signs capable of graphical representation that are capable of distinguishing the goods or services of one business from those of another. Signs which do not conform to these requirements cannot be registered.
Previously, the graphic representation requirement for European Community scent marks was satisfied by a written description of the scent employed in the mark. This changed with the recent European Court of Justice (ECJ) decision in Sieckmann v. Deutsches Patent-und Markenamt.
In Sieckmann, the Applicant sought registration of the compound methyl cinnamate as a scent mark in association with classes 35, 41 and 42 of the Nice Agreement on the International Classification of Goods and Services for the Purposes of the Registration of Marks. The Applicant described the mark in his application as the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester). The trade-mark application also included the chemical structure of methyl cinnamate, a description of methyl cinnamate's scent, and a scent sample.
In 1999, the Community Trade Mark Office (CTM) contemplated whether the scent of fresh cut grass could be registered as a trademark for tennis balls. Initially, the application was refused on the ground that the words the smell of fresh cut grass did not qualify as an adequate graphical representation of the mark capable of depiction in a shape or form as required by Article 4 of the Community Trade Mark Regulation. On appeal, the Board of Appeal decided that the scent of fresh cut grass is a distinct scent known to, and recognizable by, the majority of the population from experience, and thus that the mark's description was appropriate for registration.
The refusal of the registration of a balsamically fruity smell with slight hint of cinnamon by the European trademark registries raised two questions to the ECJ:
- First of all, a mark which cannot be reproduced visibly can still be
reproduced with certain aids
- And secondly whether the requirement for graphic representation in Article 2 is met when an odour is reproduced by (a) chemical formula, (b) a description, (c) a sample or (d) a combination of these elements.
The ECJ interpreted Article 2 of the CTMR as denoting that a ECM may consist of a sign which is not in itself capable of being perceived visually, provided that the sign can be represented graphically by images, lines or characters and that the representation of the sign is clear, precise, self-contained, easily accessible and durable. The Court ruled that requirements of graphic representation for scent marks are not satisfied by one, or any combination of the following: the scent's chemical formula, a description of the scent in written words, or deposit of a scent sample.
Some of the trade mark register offices in Europe, e.g. the UK Register Office, the Uniform Benelux Register Office, the German Patent- und Markenamt or the OHIM had to deal with applications on olfactory trade marks in the recent past. Only a few of those applications have been successful so far.
As already mentioned above, it started out with three applications of smell trademarks to the UK Register Office on 31st October 1994, the day of the enforcement of the Trade Marks Act.
If we see conventions regarding Smell Marks in Europe:
- Chanel
The first remarkable case that day was the well-known perfume manufacturer o register the fragrance of 'Chanel No 5' as an olfactory trade mark in 1994. The Chanel application failed because of the above said second requirement that the shape of the product shall not result from the nature of the good itself. However, the smell of a perfume is the good itself and can therefore never be successfully registered as an olfactory trade mark. This is the current state of the laws.
- Sumitomo Rubber Co.
The second application was lodged by Sumitomo Rubber Co., which applied to register a floral fragrance/smell reminiscent of roses as applied to tyres. This request was successful and became known as the first UK's olfactory trade mark with the no. GB 2001416.
- Unicorn Products
Another success that day was registered by Unicorn Products, which sought to register a mark in class 28 in respect of 'the strong smell of bitter beer applied to flights for darts'. This olfactory trade mark was recorded by the UK Register Office under no. GB 2000234.
- Vennootschap
The case of Vennootschap onder Firma Senta Aromatic Marketing led to a much more controversial debate concerning the registration of smell trade marks. The firm applied to register the smell of fresh cut grass for tennis balls and it was initially rejected by the examiner on the basis that this description was not a graphical representation in means of Art. 4 CTMR of the olfactory mark.
- John Lewis of Hungerford plc.
A more recent case is that from 2000 of John Lewis of Hungerford plc., in which the firm applied to register a mark in class 20 for furniture and parts and fittings therefore which consisted of 'the smell, aroma or essence of cinnamon'. This judgment shows that in the recent past the courts have been more reluctant to register a smell trade mark that is only being represented in words.
To conclude, only a few olfactory trademarks have been registered since the new provisions that were implemented according to the Directive 89/104 EEC came into force. Apart from the 'perfume' cases that cannot be registered because of the requirement that the smell shall not result from the nature of the good itself, the graphical representation of the smell still provides the most difficulties.
4. Australia:
Scent marks are explicitly registrable under sections 7 and 17 of the Australian Trade Mark Act of 1995. Section 17 defines a trade mark as a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person, while section 6 defines a sign as including scent. A search of the Australian trade-mark register at the time of writing indicates that there is one scent mark application currently being examined, while five scent mark applications have lapsed and therefore remain unregistered.
It is possible that representing a scent mark by the scent's chemical formula in Australia may constitute deception under section 43 of Australia's Trade Marks Act 1995, as the chemical formula of a scent does not represent the odour of the compound used in the scent mark, but the compound itself.
The amended Trademark Act of New Zealand made a noteworthy change in the statutory provision in regards to the definitions of the term trademark wherein the word sign includes a brand, color, device, heading, label, letter, name, numeral along with smell, sound, taste etc. Through this article it has been established that protection of smell marks in New Zealand is granted through both statutory provisions and judicial decisions.
Thus, an application for scent mark registration describing the scent mark in terms of chemical formula can be potentially rejected on the basis of the mark description. Given this potential for rejection, in the absence of a ruling by the Australian trade-mark authority, it is advisable to represent a scent mark in words, not chemical structures. Such a representation could include the chemical name of the scent, or description of the scent mark's fragrance.
5. Nations who don't want to smell the trademarked Scents:
Brazil
The only marks that can be registered in Brazil are visually perceptible signs. Therefore, scent marks cannot be registered under Brazilian trade mark law.
China
Article 8 of Chinese trademark statute restricts registered trademarks to visible symbols. Therefore, scent marks are not registrable in China.
Mexico
Article 88 of the Mexican Industrial Property Law states that only visible signs may be registered as trademarks. Therefore, scent marks do not qualify for trademark registration in Mexico.
6. India:
In India the trademark has some essentials, Essentials requirements of a trade mark The definition given in the Act is very wide. Briefly stated, a trade mark is a visual symbol used in relation to any goods or services to indicate some kind of trade connection between the goods or services and the person using the mark.
In order to bring it within the scope of the statutory definition, a trademark should satisfy the following essential requirements:
- It must be a mark, that is, a device, brand, heading, label, ticket,
name or an abbreviation of a name, signature, word, letter or numeral shape
of goods, packaging or combination of colours or any combination thereof;
- It must be capable of being represented graphically; It must be capable
of distinguishing the goods or services of one person from those of others;
- It must be used or proposed to be used in relation to goods or services;
- The use must be of a printed or other visual representation of the mark;
- Such use in relation to goods must be upon, or in any physical or in any
other relation whatsoever to the goods; and
In relation to services must be use of the mark as or as part of any statement about the availability, provision or performance of such services,
- The use must be for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, and some person having the right to use the mark either as proprietor or by way of permitted user as the case may be. It is not necessary that the person using the mark should reveal his identity.
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 addition, in accordance with Rule 25 (12)(b) of the Trademark Rules, 2002, an application for trademark registration mandates its graphical depiction while Rule 28 and 30 requires that it be represented on paper, in a durable form. Therefore, this requirement acts as a significant impediment to the recognition of olfactory marks as a legitimate trademark in India.
Definition of Trademark under the Indian law is not quite different from the previous international treaties. It neither includes nor expressly excludes the registrability of nonconventional trademarks. Even though it is open to interpretation, the definition of mark doesn't involve any non-conventional trademark but the Draft Manual issued by the Trademark Office provides for special consideration for certain non-traditional trademarks. When it comes to the consideration two questions are usually raised. One being the degree to which the standards applicable to traditional trademarks adapt unconventional subject matter and secondly where there is the presence of gaps in the existing law.
The problem with registration of non-traditional marks like smell marks is that it cannot be represented graphically. However, the Indian Judiciary broke the conventionality by granting protection to the manufacturers of Zippo lighters on the basis of the shape of its Lighters to keep its counterfeiting in check. Further, the boundary was pushed wherein Yahoo! Registered its sound under the Indian Trade Mark Act, 1999.
Later, in the year 2009, the Trade Mark office came up with a Draft Manual which gives the non-traditional marks distinct concern and entails certain provisions with deal with the same. As of now, the provisions of the Draft Manual have not been incorporated into the Indian Trade Mark Act, 1999. Consequently, the registration of smell marks as a singular trade mark have not seen their road to finality.
The primary reason for such a low registration of smell marks is because they are defined subjectively and are therefore open to interpretation. The complications that arise from human perceptions of odours lead to the argument that subjective views are inadequate when determining whether the smell mark functions as a trademark. Further, smell trademarks are arguably one of the most difficult types to represent graphically.
VI. Findings Of The Courts
As regards to chemical formulae as the United Kingdom Government has rightly noted, few people would recognize in such a formula the odour in question. Such a formulae is not sufficiently intangible.
The question whether the mark was capable of being represented graphically was referred to the European court of justice which held as follows:
- A Trademark may consist of a sign which was not in itself capable of
being perceived visually provided that it could represented graphically,
particularly by means of images, lines or characters and the representations
was clear, precise, self-contained, easily accessible, intelligible durable
and objective.
- In respect of an Olfactory sign, the requirements of graphical representability were not satisfied by a chemical formula, by a description in written words by the deposition of an odour sample or by a combination of those elements.
As to the deposit of an odour sample it does not constitute a graphic representation for the purpose of directive. Moreover, an odour sample is not sufficiently stable or durable.
Accordingly, in respect of an olfactory sign, the requirements of the graphic representability are not satisfied by a chemical formula by a description in written words, by the deposit of an odour sample or by a combination of those elements.
Advantages Of Scent Mark Registration
- Increase Sales
Scent can trigger instant emotional connections with customers, thus being very effective in boosting sales. Exxon On The Run convenience stores highlighted a new brewing system with coffee scents and saw a 55% increase in coffee sales. - Heighten Value Perception
Customers tend to perceive a scented space as being of better quality. Study participants were willing to pay 10-15% more for a pair of Nike shoes in a scented room as compared to identical shoes in a unscented room. - Expand Brand Recognition
Scent helps create memorable experiences and associations in people's minds. Research shows at least 63% of consumers have chosen one store/brand over another due to a stores pleasant scent. - Enhance Customer Experience
Research indicates a 40% improvement in mood when exposed to a pleasant scent, resulting in happier customers. - Create a Welcoming First Impression
Scent sets a lasting first impression that connects emotionally on deeper levels with your customers from the second they walk through your door. In fact, 82% of consumers spend more time in a place that was pleasantly scented. - Increase Linger Time
The right scent can encourage customers to interact with your product longer. In a study conducted by Samsung, shoppers underestimated the amount of time they spent shopping by 26% and visited 3x more sections when exposed to aromas. - Enhance Interior Aesthetics
Whether your space is new or in need of a facelift, scent is an economical way to create or enhance a modern ambiance, giving your business an updated look and feel. - Create Memorable Experiences
Scent can evoke a warm feeling of familiarity and trigger memories. People are 100x more likely to remember what they smell vs what they see, hear or touch. - Influence Mood
Pleasant scents can help your customers feel relaxed, happy and ready to do business. A fragrance expert can help you identify the perfect scent match for your business. - Combat Malodours
If your business struggles with malodours or produces an off-putting smell, using an odour neutralizing fragrance can help to greatly reduce, neutralize, or eliminate malodours.
The battle for including olfactory signs for both commercial purposes, and importantly, for use by the disabled is a new concept which the world is yet to give a serious thought to. Nevertheless, if one day, smelling trademarks could be viewed from the human rights perspective and used by the blind or the deaf (who cannot hear the sound trademarks) to identify their required goods, it would be a giant leap for humanity. Till then, I would hope that we don't turn up our noses but allow the scent in the air to reach our humane senses. Once this step is complete, rest assured, it will have a permanent mark, because, haven't you heard, scent has the strongest effect on our memory.
VII. Disadvantages/Critiques
While scent marks appear to be an innovative way to distinguish goods and services, there is a strong case against the ability of scents to function as reliable indications of trade source.
Scientific research on the human sense of smell indicates the highly subjective nature of odour perception undermines the ability of scents to act as objective and reliable indications of source. This not only prevents scents from functioning as trade-marks, but also subverts reliable judicial administration. Universal preferences for certain scents will also deplete the limited number of desirable scents available for scent marks, resulting in scent mark depletion.
We can criticize the smell marks by two ways:
- Scents are too subjective to function as trade-marks
A trade-mark's function is to act as an indicator of source for goods and services. Thus, the function of a trade-mark is objective – either the mark functions as an indication of a particular source or it does not. Unfortunately for scent marks and the legal systems they populate, the human sense of smell is not objective but instead very subjective. Some individuals have a keener sense of smell than others.
- Universal scent preferences will result in scent mark depletion
Depletion theory is a doctrine that has been applied in American trade-mark law to colour trademarks. This theory operates on the principle there are a limited number of sensory devices (i.e. colour, scent or sound marks) that will be favourably perceived by consumers. Granting a trademark monopoly over one of the few desirable marks available depletes the remaining pool of desirable marks and thus adversely affects competition.
Depletion doctrine is readily applicable to scent marks as there are cross-cultural preferences and aversions to smells. Shared cultural scent preferences mean there are relatively few desirable scent marks to be shared among traders. Granting a scent mark registration for one of these marks will deplete the pool of desirable scent marks, reducing competition. Further, the international nature of trade-mark registration means that a scent mark registration in one country has the potential to deplete the available pool of scent marks in other countries. Given universal human preferences for certain odors, a scent mark registration in one country potentially depletes the pool of marks both nationally and internationally. This reduces competition on a local and global scale.
The fourth, and most serious, inability of scents to function as trade-marks impacts the reliability of judicial administration. The subjective nature of smell will unavoidably affect how the trier of fact perceives the evidence in a scent mark infringement case. This will result in unpredictable outcomes in scent mark litigation. While flexible, as opposed to strict, judicial administration may be more just in some instances, the highly subjective nature of scent perception means that litigants will truly be entering a lottery system when they proceed to trial for scent mark actions. The end result is neither flexible nor strict judicial administration, but arbitrary results that will deleteriously impact scent mark litigation.
VIII. Challenges Faced by Our Scents to Get Registered
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.
Protection of 'smell' as trademark has been a long-debated topic. Although various countries have laid down specific provisions in regard to the protection of smell marks, nevertheless the standards laid down by different countries are in conflict with each other. Some arguments in favor of protecting smell marks highlight the fact that the role of scent in today's product is not restricted to sell but also extends to distinguish the product. Also, it plays an active role in establishing a long duration odor memory. While arguments in against focuses on consumer's access to product's scent before they purchase. It speaks of the likelihood of confusion among consumer and the difficulty to differentiate without expert aid.
In spite of the recognition gained by smell marks from various countries, it still lacks backing of strong legal provisions and development is needed in this branch of law. With more countries establishing provisions for the registrability of smell marks a clear contradiction can be seen between the standards laid down for the same by the countries. Where on one hand countries like Australia and Europe depend on the Sieckman test, the United States trademark law is guided by the Qualitex ruling of the Supreme Court.
The most basic challenge faced by a smell mark is the consumer's accessibility to the smell before purchasing the product. If not then the basic purpose of the smell to act as a trademark is defeated because the purchaser has to wait to smell its scent till the product is put to use at home. This way he cannot connect the odor with the origin and hence his decision won't be influenced at the time of the purchase.
Another difficulty which usually arises in case of smell marks is that even though a consumer recognizes the smell or finds it familiar, he may not be able to connect the smell with the identity of the product or manufacturer on a consistent basis. Regardless of whether an item's aroma operates as a root identifier, the producer looking to shield that mark from infringement must have the capacity to show that comparative fragrances may amount to likelihood of confusion.
Also, the total numbers of scents of promising character which are known to the mass public through a written description are limited. Therefore, registration of specific scents should not be allowed to evade depletion of the supply of scents available for use by others.
Similar aroma mixes, just like similar colours can be hard to recognize without expert help and when it comes to smell marks it proves to more difficult and burdensome than colour marks in case of the practical difficulties faced in its administration.
Conclusion
Taste marks may be easier to represent graphically – the SCT reports that the graphic representation requirement was satisfied by using a written description of the taste and an indication that it concerns a taste mark – but the hurdle of distinctiveness is even harder to overcome as are assertions concerning functionality.
Scent marks appear to be an innovative and catchy way for traders to market their goods and services. However, an equally strong cae made that scent marks pose a significant dilemma for trade-mark law. The difficulties in representing scent marks in trade-mark registries, the inability of scent marks to function as stand-alone identifiers of trade source, the subjective nature of scent perception, and scent depletion theory ultimately combine to undermine the utility of scent as trade-mark.
It is often difficult for traders to represent such marks in the trademark registries, it lacks the basis to perform as the sole identifier of the source or origin, the theory of smell depletion and also the fact that smell or scent is subjective in nature and it changes and depends from person to person and so different consumer may perceive it in a completely different way based on their opinion. All these together works in a negative way sometimes and challenge the functionality and efficacy of smell marks as trademarks.
The comparative analysis of trade-mark regimes at the beginning of this paper highlights that the future of scent marks is uncertain. No international treaty mandates the registration of scent marks. In fact, some treaties, such as Trademark Law Treaty, explicitly state the terms of the treaty do not apply to scent marks. Regarding national laws, some jurisdictions are more tolerant of scent marks than others.
For example, the Australian trade-mark statute now expressly contemplates scent mark registration, and jurisdictions (e.g. Japan) that previously forbade scent marks are now silent on the issue of registrability.
The Sieckmann ruling has created a contradictory situation in Europe with respect to registration of scents under the European Community Mark (ECM) system. ECM applicants are not barred from applying for scent registrations, but simultaneously do not have readily apparent, acceptable methods to describe scent marks on trade-mark applications. Meanwhile, there are jurisdictions whose laws are silent on the registration of scent marks, such as Canada, and a number of countries (e.g. Brazil, China and Mexico) which forbid scent mark registration.
While it is uncertain whether scent marks will become more commonplace and more widely accepted for trade-mark registration within individual jurisdictions, a lack of uniformity re scent mark registrations may have deleterious effects on national economies. Because scent marks are currently very rare, it remains to be seen whether these marks are merely a passing marketing fad or may, in some cases, become some of the most commercially valuable marks of the future.
Thus in conclusion it can be said that it is a fact that the way products smell can be a huge determining factor in individual's life but lack of graphical representation and arbitrary and random nature of smell or scent can sometimes pose a risk in case of registration of a smell mark but a balance between the utilization of technology by various Trademark Offices of different countries and founding jurisprudence of trademark, the lacuna present in process of protection of smell marks can be erased.
End-Notes:
- Coca-Cola Tms. [1986] rpc 685
- The Lauham Act[1946] Sec. 45
- In re Clarke, 17 U.S.P.Q.2d 1238, 1239 (T.T.A.B. 1990).
- Qualitex Co. v Jacobson Prods. Co., 17 U.S.P.Q.2d 1240 (TTAB, 1990)
- Chanel's Application, 31 October 1994
- Myles Limited's Application [2003] ETMR 56, decided on 5 December 2001
- Sieckmann v Deutsches Patent-und Markenamt, Case C-273/00, 2003 E.T.M.R. 37
- Sumitomo Rubber Co's Application No. 2001416, 31 October 1994
- Unicorn Products' Application No. 2000234, 31 October 1994.
- John Lewis of Hungerford Ltd's Trade Mark Application p [2001] RPC 28
- Sieckmann v German Patent and Trademark Office (case C-273/00) December
12, 2002
Authentication No: AG021710908360-5-820
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