The objective of this research paper is to bring out a cross jurisdictional analysis of Smell marks across the globe. The main objective of Intellectual Property Law is to protect creations like technological advancements or protect the economic status of an inventor of an innovation. With increase in innovation, the inventors are seeking new methods to protect their intellectual property. One such is the smell mark, which still persists with ambiguities. The author through this research paper wants to highlight an aspect of science in law and also about the ambiguities faced by smell marks in law. The author seeks to present an analysis of laws related to smell marks in nations such as The US, UK, Singapore and India.
INTRODUCTION
In recent years, Trademark has significantly developed and its branches are covering far and wide frontiers. With the increase in the boom of industries, a wide scope for innovation is created and as a result, industries have devised new methods to protect their intellectual assets. One such unconventional Trademarks are Smell Marks, which have evolved as a result of manufacturers giving smells or scents to their products in order to make them distinct from other similar products.[1] Human beings, the highly evolved species, possess an olfactory system that is capable of discriminating a wide range of odours. A human nose is capable of distinguishing roughly 1 trillion odours and by understanding how humans process the complex information contained in the scents or memories of scents, offers a window into how extraordinary human brains function.[2] Experiments performed by various scientists all over the world demonstrates that smells form a part of our memory.
The intangibility of a Trademark can be observed when an unconventional trademark such as a smell mark is considered. Smell marks, which are also known as olfactory marks where smell acts as a distinctive feature to differentiate the products or services of the producer. The trademark arena is always developing and a large value of ambiguity still persists when it comes to smell trademarks in India. For a long time, the possibility of protecting a scent as a trademark has been the subject of decisions of the European Intellectual Property Office (EUIPO), EU courts as well as foreign courts.[3] . However, with the passage of time, not only logos and symbols are being associated with goods and services but also sound, taste, smell, texture, hologram, motion, shape of the goods or services.
CAN AN AROMA BE TRADEMARKED?
The main objective of Intellectual Property Law is to protect creations like technological advancements or protect the economic status of an inventor of an innovation. Inventors, to make their products more distinctive have given smells or scents to the product.
One of the finest examples of a registered smell mark is that of the Cosco tennis ball. In 1999, a remarkable proposition arrived before the Community Trademark Office in the jurisdiction of the European Union whereupon it had to debate and decide on whether it could allow registration of the smell of freshly cut grass to serve as a trademark for a brand of tennis balls.[4] The company’s products had already acquired distinctiveness by then, hence the Board approved the appeal that the smell of the freshly cut grass is a legitimate and appropriate trademark for the identification of the tennis balls.
According to Section 2(1) (zb) of the Indian Trademarks Act, 1999, a product to be marked as a Trademark must be capable of being represented graphically. In the famous landmark judgement of Ralf Sieckmann vs. Deutsches Patent- und Markenamt case[5], hereinafter referred to as the Sieckmann case, took before a German Patent Registration office regarding trademarking a scent which was in the form of a chemical formula. The applicant specified that the samples of the chemical could be found in the local laboratories across Dutch Yellow Pages and presented a sample describing it as ‘balsamically fruity with a slight hint of cinnamon’. The primary rulings were whether registering scent valid and the mentioned methods of graphical representation would meet the requirements under Article 2. Noting that the signs mentioned in Article 2 did not constitute an exhaustive list, the court ruled that a scent could receive a trademark protection provided it is graphically represented. A representation as such must enable the sign to be represented visually, particularly by means of images, characters or lines, it should be clear, intelligible and self-contained. The court after examining these criteria ruled out the use of graphical representation of the chemical formula as a direct identification as there was a lack of clarity in the matter, lack of objectivity and precision and it rejected the usage of verbal description as well.
THE EXISTING AMBIGUITY
Smell marks are a unique breed of Trademarks. 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.[6]
The smell appears to be one of the most innovative methods for availing a trademark protection but at the same time they do not possess the ability to act as a reliable trade source.
Scents are too subjective to function as trade-marks[7]. Wherein Trademarks are supposed to function objectively, the smell marks flow through the line of subjectivity. The function of a Trademark is to indicate the source of goods and services, but it is likely to cause chaos in the market as it will be flooded with various scents and one individual’s sense of smell may be keen than the other.
A very few smell marks have managed to get trademark protection such as the scent of raspberries, bubble gum scent for sandals, cherry and grape lubricants for combustion engines, etc.
In Myles Ltd.’s application[8] on fuels and diesels, the smell of raspberries was denied the registration as it lacked the attribute of distinctiveness.
Likewise, in the case of John Lewis[9], 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.[10]
In the case of Sieckmann c. Deutsches Patent-und Markenamt, The chemical formula that represents the scent does not constitute the odour of a substance because it is not clear and precise sufficiently. In addition, a formulation does not represent the odour, but the substance itself. A deposit of the odour sample does not represent a graphical representation. Temperature, humidity and wind conditions affect Smell. It can become stronger or weaker. Physical, mental, sensitivity and health play a crucial role.
Having laid down these criteria, the Court observed the following difficulties encountered in graphically representing smell marks:
- Representation as a drawing was unrealistic.
- Representation by chemical formula would not suffice, as the compound recipe speaks to the substance itself and not its scent.
- Further, representation by chemical formula needs clarity and accuracy, not just on account of the way that not very many individuals would have the essential specialized information to decipher the scent of a substance from its recipe, additionally attributable to the reason that the same substance would deliver diverse odours at distinctive temperature, fixation, and so on.
- Store of a substance’s example with the registry was not a viable option, since, firstly, it was not a graphical representation, and furthermore, scent being unstable may blur and even vanish over a timeframe[11]
The first question that arises when infringement is in issue is whether or not the alleged infringing mark is identical to the trade mark registered or not. If it is, and is used in relation to the same goods, the trade mark has an absolute monopoly.[12] Where, however, the mark is not identical but merely similar, the monopoly is restricted to uses, which create the necessary likelihood of confusion on the part of the public. This is the fundamental aspect of the law and it is for this reason that the graphical representation, being the means by which the trade mark is defined, must be adequate to enable the public to determine precisely what the sign is that is the subject of registration.”
REGISTERABILITY OF SMELL MARKS WORLDWIDE
The graphical representation of an unconventional Trademark may be acceptable in one country and may suffice in another country. It has always been a challenge to obtain protection to an unconventional Trademark when compared to Conventional Trademark.
The TRIPS agreement which came into force on 1 January, 1995 is said to be the most comprehensive multilateral treaty regarding Intellectual property. The agreement sets out standards for protection to be provided by each member. The TRIPS Agreement is a detailed and expansive agreement consisting of 73 Articles divided into 7 Parts. With respect to smell marks, TRIPS do not have a provision. 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 Trademarks.[13]
- THE UNITED STATES
The most popular case where the scent of a product was recognized as a trademark was in re Clark. In Clarke, Celia Clarke appealed a decision from the USPTO for refusing to register her scent mark. Her mark consisted of a floral scent which was used on a sewing thread and an embroidery yarn. The Trademark Trial and Appeal Board found the scent to be distinctive of the yarn, possessed secondary meaning and, therefore, upheld Mrs. Clarke’s application to register the mark as used on kits where the purchaser would knit a skunk that smells like plumeria. Perhaps no American has played a larger role in getting scents recognized as trademarks than James E. Hawes. Hawes first advocated for the registration of scent trademarks in 1989.[14] Hawes represented Cecilia Clarke in her petition before the TTAB to register the scent of her yarn in 1990.184 Unfortunately for Hawes, on September 29, 1997, Clarke’s registered trademark for the plumeria scented thread was cancelled by the PTO for a failure to file a Continuing Use Affidavit under Section 8 of the Lanham Act.185 That is, the mark was cancelled for non-use[15].
Later, the TTAB held that the scent used in connection with the yarn is not an inherent attribute of the goods, but a feature supplied by the applicant. In other words, the consumers would not typically expect yarn to have a distinctive scent and the yarn would function in the same manner without the scent. Hence the registration was successful.
In the US, it has to be shown that the fragrance serves no important practical function other than to help identifying and distinguishing a brand from another. This means that a product who’s only distinguishing substance is that of its smell like perfume, it is not granted the protection of Trademark[16]. Since the Lanham Act [17], the United States Patent and TradeMark Office(USPTO), reasoned that because scents are not explicitly excluded from the statue, they are eligible for registration under Section 2(f) of the Lanham Act, affirming that scents can function and fulfil the objectives of a trademark.[18] In affirming that scents can be protected with a trademark, the USPTO asserted that trademark applicants will not be allowed to register the scent as a mark unless they prove that the scent is both non-functional and distinctive.[19] To fulfil the non-functional standard, a product feature must not be “essential to the use or purpose of the article,” must not affect “the cost or quality of the article,” and must not be natural to the product or the result of the manufacturing process. In other words, scents that have a utilitarian purpose are ineligible for registration.
- THE UNITED KINGDOM
The definition of a trademark in the Trademarks Act 1994 follows that of the Directive [20]and the Community Trade Marks Regulation[21] and is “any sign capable of being represented graphically which is capable of distinguishing goods or services’. Graphical representation is purely a technical requirement for registration purposes[22]
A fragrance can be a sign and while not specifically mentioned in the examples given in section 1(1) it is clear from the Commission’s Explanatory Notes on the draft Regulation, the White Paper[23] and subsequent *E.I.P.R. 381 parliamentary debate that it was intended that fragrance fall within the definition.
Registration will be absolutely refused under section 3(1) if the requirements of section 1(1) are not satisfied and if the trademark is not distinctive. Again, therefore 0fragrance has to be capable of functioning as a trademark by distinguishing goods. In order to do so a sign must be distinctive. However, the 1994 Act recognises that a sign, although not inherently distinctive, may have become by its use factually distinctive. This means that, as in the United States, a sign may become distinctive through its use by acquiring a secondary meaning.
Hence all of the above practicalities in proving that fragrances function as trademarks will apply in the United Kingdom and it will be rare that a fragrance could be proved to be factually distinctive[24]
- SINGAPORE
Singapore has undergone significant changes in the field of Intellectual Property in the past few years. the Trade Marks (Amended) Act 2004 came into force on 1 July 2004, incorporating significant changes to the Trade Marks Act[25], in line with Singapore’s commitments under the United States-Singapore Free-Trade Agreement (USSFTA). The new law removed the requirement that a mark has to be “visually perceptible” in order to qualify as a trade mark by deleting the phrase “visually perceptible” in the definition of trade mark in the Act.[26]
This Amendment paved a way for those previously unregistered marks such as smell marks to be registered, if conditions prescribed in the Act are met.
- INDIA
The Indian Trademarks Act, 1999 defines a “mark” under section 2(1) (m)[27] as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. This definition of a mark has widened the scope of a mark to include and provide marks to various new inventions or innovations.
The smell mark falls under the ambit of unconventional marks and there is no mention of it in the Indian Trademarks Act, 1999.
Like every other country India is also not free from the issue of graphical representation of the smell marks and to resolve this issue the Draft Manual provisions have been introduced which if not implemented could stunt the growth of registrability of smell marks in India.[28]
In India, smell or scent is not directly referred to in the definitions of mark or trademark under the 1999 Act. However, the definitions do not exclude the possibility of covering smells or scents. However, to seek registration under the 1999 Act, the smell or scent should be described in writing i.e., represented graphically. For example, the smell of strawberries emanating from strawberries-scented washing powder can be described as, “scent of strawberries from clothes after every wash.
However, in India there is still a need for the law to catch up on innovating unconventional Trademarks.
CONCLUSION
Unconventional marks are remarkably steady badges of origin and are rarely used without any additional word or figurative marks to back them up.[29] The position of Smell marks has still not made its mark in the Intellectual Property arena around the world, the ambiguity still persists. There is a need for encouragement for new inventions and transfer of technology worldwide. There is a need for more clarity on the distinctiveness of an unconventional Trademark and particularly on the criteria of graphical representations in case of smell marks which are non-visible. There must be harmonization of requirements of graphical representations of smell marks.
The graphical representation and tests for the distinctiveness of marks are more or less the same in different jurisdictions. In this globalized era of growth and development in technology and innovations have caused a high leap of acceptance of unconventional Trademarks. However, there is a need for a systematic guideline for registration of Smell marks. Liberalization and relaxation of interpretation of smell marks is the need of the hour.
Citations:
[1] Javvadsheikh, Olfactory Marks (Smell Marks), http://www.legalserviceindia.com/legal/article-2928-olfactory-marks-smell-marks-.html
[2] Sarah.c.p.williams, Human nose can detect a trillion smells, Sciencemag.org(Mar. 20, 2014 , 2:00 PM), https://www.sciencemag.org/news/2014/03/human-nose-can-detect-trillion-smells
[3] Joanna Woźniak, can one have an exclusive right to a scent?, Inprinciple(07.12.2017), http://www.codozasady.pl/en/can-one-have-exclusive-right-to-a-scent/
[4] Raja Selvam, what is smell trademark or scent trade mark?, Selvam and Selvam( Mar. 11, 2013), https://selvams.com/blog/smell-trademark/
[5] Ralf Sieckmann vs. Deutsches Patent- und Markenamt, C-273/00, 12 December 2002, European Court of Justice.
[6] Senthil kumar, India: Smell Marks: The New Rage In Trademarks (28 September 2016), https://www.mondaq.com/india/trademark/530772/smell-marks-the-new-rage-in-trademarks#:~:text=The%20trademark%20regime%20has%20now,%2C%20sound%2C%20anhen%2C%20there%20have%20been,grape%20lubricants%20for%20combustion%20engines.d%20taste%20marks.& text=Since%20t
[7] Supra note 4.
[8] Myles Limited’s Application [2003] ETMR 56, decided on 5 December 2001.
[9] 1 John Lewis of Hungerford Ltd’s Trade Mark Application p [2001] RPC 28.
[10] Shikhar Sinha and Kunal Gopal, Tracing the Jurisprudence of Smell marks as a Trademark, HNLU Student Bar Journal (April, 2017), Issue 2, volume 1
[11] BIP Patent Attorneys, Non-conventional Trademark-Smell marks, 30 June 2017, https://www.bananaip.com/ip-news-center/non-conventional-trademark-smell-marks/
[12] Id.
[13] Harshada wadkar, Non-conventional marks, Lex Orbis, March 29 2019, https://www.lexology.com/library/detail.aspx?g=4339efff-eba0-4339-a5f9-47f2d72ae7d1
[14] James E. Hawes, Fragrances as Trademark, 79 TRADEMARK REP. 134 (1989).
[15] In re Clarke, 17 U.S.P.Q.2d (BNA) 1238 (T.T.A.B. 1990)
[16] Jacob Gershman, Eau de Fracking? Companies Try to Trademark Scents, The wall Street Journal( April 14, 2015 12:38 am ET), https://www.wsj.com/articles/should-companies-trademark-scents-1428965455?cb=logged0.34832156728953123
[17] 15 U.S.C. §§ 1051 et seq
[18] Franco Gablo, Making Sense of the Nonsensical: A look at Scent Trademarks and their Complexities, December 21 2017, https://www.ipwatchdog.com/2017/12/21/scent-trademarks-complexities/id=91071/
[19] Id.
[20] Council Directive 89/104/EEC of 21 December 1988, Article 2.
[21] Council Regulation (EC) 40/94 of 20 December 1993, Article 4.
[22] See Annand and Norman, Blackstone’s Guide to the Trade Marks Act, 1994, at 59.
[23] Reform of Trade Marks (Cm 1203) 1990, paragraph 2.12: “The law will therefore neither exclude nor make specific provision for the registration as trademarks of smells”
[24] 1995, 17(8), 378-384
[25] Chapter 332, 1999 Edition
[26] Anil, Samtani & Faye, Chiam & Julian, H.J.R. & Jeremy, Wee. (2009). Smell Marks – A Singapore Study and the Implications for the Commercial Use and Exploitation of Non-Traditional TradeMarks. IIC; international review of industrial property and copyright law. 40. 698-714.
[27] Draft Manual Ch II, at 3.1.
[28] ISSN 2455-4782
[29] Gangjee, Dev, “Non Conventional Trade Marks in India” National Law School of India Review, vol. 22, no. 1, 2010, pp. 67–95. JSTOR, www.jstor.org/stable/44283714. Accessed 4 Aug. 2020.
