One of the oldest senses of our evolution is the sense of smell. Although for majority of the human olfaction plays a very important role for social and emotional part but can the same be used for identifying trade and commerce.
As per Trips agreement
“Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.”[1]
On a similar line, as per Indian statute i.e. The Trademarks Act, 1999
“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;[2]
On conjoint understanding of both the above definitions, one can understand that first and foremost condition for a mark to be able to be termed as a trademark is that the said mark is able to be represented graphically.
The problem with olfactory marks is it cannot be reduced in a graphically representable form. In addition to this, smells tend to change itself with time and each person perceives it in a different way.
In Sieckmann v German Patent and Trademark Office[3], the European Court of Justice had an occasion to rule over non-conventional trademarks. The court ruled:
“Article 2 of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
In respect of an olfactory sign, the requirements of 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.”
USPTO follows a different perspective on the issue and provides that scent marks can be granted a trademark. In Re Celia Clarke[4], Trademark Trial and Appellate Board of US ruled
“Upon careful review of this record, we believe that applicant has demonstrated that its scented fragrance does function as a trademark for her thread and embroidery yarn. Under the circumstances of this case, we see no reason why a fragrance is not capable of serving as a trademark to identify and distinguish a certain type of product. It is clear from the record that applicant is the only person who has marketed yarns and threads with a fragrance. [FN4] That is to say, fragrance is not an inherent attribute or natural characteristic of applicant’s goods but is rather a feature supplied by applicant. Moreover, applicant has emphasized this characteristic of her goods in advertising, promoting the scented feature of her goods. Applicant has demonstrated that customers, dealers and distributors of her scented yarns and threads have come to recognize applicant as the source of these goods. In view of the unique nature of applicant’s product, we do not believe that the failure of applicant to indicate in her promotional materials the specific scent or fragrance of her yarn (admittedly difficult to describe except in the manner that applicant has done so) is significant. In her advertisements and at craft fairs, applicant has promoted her products as having a scented nature. We believe that applicant has presented a prima facie case of distinctiveness of her fragrance mark. Compare In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (where applicant failed to demonstrate that the features (colors) sought to be registered had been promoted as a source indicator). [FN5]”
Australian law explicitly recognizes scents as a Trade Mark. As per Section 6(1) read with Section 17 of Trade Marks Act, 1995[5] scents are brought within the definition of Trademarks.
In India, any mark which satisfies the conditions of being represented graphically and which is capable of distinguishes the features of goods of one person from that of others is entitled to be granted a trademark.
As on date, India has not granted any protection to olfactory marks neither our legislation specifically provides for its protection, but it will be interesting to know if these categories of marks are recognized by our Office bearers in future.
[1] Article 15(1) of Trips Agreement
[2] Section 2(1)(zb) of The Trademarks Act, 1999
[3] Case C-273/00
[4] TTAB – Trademark Trial and Appeal Board – *1 IN RE CELIA CLARKE, DBA CLARKE’S OSEWEZ Serial No. 758,429 September 19, 1990 – IP Mall (unh.edu)
[5] Trade Marks Act 1995 (legislation.gov.au)
DISCLAIMER-
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
AUTHOR:
Kartik Kumar Agarwal
Advocate
Broadcasting Rights & Copyright Law – By Manit Sharma