Smell is 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 representing the smell in a visual way is a tricky process. 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.
An additional obstacle to smell mark registration is that the smell must not result from the nature of the good itself. For example, an application by Chanel to register its well-known No. 5 fragrance as a smell mark in the United Kingdom was unsuccessful on that count – the scent of the perfume being the very essence of the product. However, some smell mark descriptions have met the distinctiveness test and been successfully registered, such as: a Dutch company’s tennis balls with the scent of newly mown grass; and UK registrations for tires with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer.” The Office for Harmonization in the Internal Market (OHIM), however, does not agree with the granting of the two UK registrations.
-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
In the landmark case of Sieckmann v. German Patent Office(case C-273/00) where the European Court of Justice’s decision constituted one of the first steps taken towards attempting to put into perspective the entire matter of graphical representation of olfactory marks. The primary issue here was whether a scent, graphically depicted by the applicant as “balsamically fruity with a slight hint of cinnamon” would permit its registration as a smell mark.
The bench observed the various difficulties in the graphical representation of smell.
Firstly, its representation in the form of a worded description would remain subjective to a large extent, free to be interpreted differently by different people. To describe it with such clarity and precision that it is interpreted identically by every reader would prove to be a very difficult task. For instance, Courts may grapple with enforcing a scent described merely as “strawberry” or “peach”
The representation of the smell in a chemical form does not enable to be definitively identify the exact scent/odour emanated, on account of certain factors influencing its perception, such as temperature, concentration etc. Additionally, the technical knowledge it would require to interpret the formula to ascertain the smell itself is essentially unknown to the general public.
Thirdly, deposition of a sample may prove to be insufficient -the smell being volatile in nature often tends to change or even fade over time. Article 2 of Council Directive 89/104 holds that the representation so made must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
The Bench’s 2002 landmark judgment accordingly held that although olfactory marks possess distinctiveness, clear, concise and objective graphical representation of the smell mark under the present law cannot be attained; smell marks thus not constituting trademarks within the definition of Article 2.
The Indian Trademarks Act defines trademarks as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” The Rules define graphical representation to mean the representation of a trade mark for goods or services in paper form. Thus, it can safely be asserted that graphical representation is a sine qua non for TM Registration in India. Another important criterion to be satisfied is distinctiveness. The proviso to section 9 (1) of the Trade Marks Act, 1999, recognizing this concept of “acquired distinctiveness” inter alia provides that “a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it”.
Though graphical representation and secondary meaning associated with non-traditional trademarks are sine qua non, the principle of representation imposes a greater hurdle for the registration of smell marks. In the event that a practical and cost effective solution is devised, eliminating the impediment to graphical representation, olfactory marks shall be registrable, obviously along with distinctiveness. The Indian system has definitely gathered a lot from the experiences of the European Union and the United States, and while its decision to not grant trademark-ability status to olfactory marks is based on practical impediments that exist today, the same may be subject to change, considering the growing commercial and advertising trends that exist, coupled with technological advancement.