Introduction to Olfactory Trademarks- protecting scents
The primary purpose of a Trade Mark (TM) is to allow the consumers to identify the origin of goods or services and therefore to be able to distinguish the goods or services of one enterprise from that of another. For this reason, TM protection in Europe as well as in the United States of America (US) was traditionally ‘reserved for marks, that are easily perceived as source identifiers such as words, names, logos, and graphic symbols.In today’s world, the scope of trademark protection law is widening worldwide. The realm of trademark law traditionally encompasses visual symbols, logos, and phrases that distinguish goods and services. However, as markets evolve, there has been much innovation and progress in the field of "non-conventional trademarks," which encompasses smell, sound, taste, and other senses, olfactory trademarks are a prime example of that.
Olfactory trademarks refer to distinctive scents used to signify the source of a product or service. Unlike traditional trademarks, which rely on visual or sound recognition, olfactory trademarks engage the sense of smell. Examples could include the unique scent of a retail store or a specific fragrance associated with a product, such as Play-Doh’s iconic smell.
In simple words “where a smell is affixed to a generally unscented product or when the scent is notably unique so as to elicit consumer awareness.”
Key objections against trademark protection for smells
Two of the greatest hurdles that non-traditional signs had to overcome in order to obtain TM protection is meeting the distinctiveness and graphical representation (GR) requirements. Being distinct from others is necessary to establish that the sign will be capable of indicating the origin of goods or services.
As smell is subjectively perceived and inherently difficult to describe, its distinctiveness is often questioned. Even if a scent is distinctive and identifiable, buyers and trademark investigators may associate it with entirely different olfactory experiences.
Registration of Olfactory marks in different Jurisdictions
Europe: It is an arduous task to register olfactory trademarks in most jurisdictions. For instance, in EU jurisdictions, the Sieckmann factors play a crucial role in trademark registrations. The landmark ECJ case, Sieckmann v. Deutsches Patent, established the criteria for trademark registration. To be registrable, it must be "clear, precise, self-contained, easily accessible, intelligible, durable, and objective." For smells, achieving precision and objectivity remains a significant hurdle. Accurately describing a smell, its chemical formula, or its verbal distinction poses a formidable challenge, not only to achieving its distinctiveness, but also to registration of olfactory trademarks in EU jurisdictions.
United States: The United States of America was the first to allow the registration of olfactory marks. The Trademark Review Commission of the United States Trademark Association confirmed after reviewing the Trademark Act of 1946 that the trademarks’ “symbol, or device should not be deleted or narrowed to preclude registration of things like a colour, shape, smell, sound, or configuration which functions as a mark.”
The Case of In Re Celia Clarke The first case of olfactory trademark registration occurred in the US where a scent described as a "high impact, fresh, floral fragrance reminiscent of Plumeria blossoms" was registered for the petitioner's sewing thread and embroidery yarn. The registration was granted not solely based on distinctiveness but rather on the scent's ability to distinguish the petitioner's products from competitors in the market.Recently, toy giant Hasbro has become the latest company become a brand with a registered scent mark in the United States Patent and Trademark Office (USPTO). Similarly, Play-Doh's sweet, almond-like scent was registered as a trademark in the US in 2018 due to its strong association with the product itself, independent of the product's functionality.
United Kingdom: In the UK, Sumitomo Rubber Industries (trademark No. 2001416) became the first company to seek registration of an olfactory trademark – a floral fragrance/smell reminiscent of roses applied to tires. Sumitomo successfully secured the trademark, not because the scent of roses was inherently distinctive but rather because Sumitomo was the only tire manufacturer whose tires smelled like roses, leading consumers to associate rose-scented tires with Sumitomo.
India: Smells and tastes are currently not recognized as trademarks in India. One of the primary challenges in registering olfactory trademarks is the requirement for graphical representation. Indian trademark law, like many others, traditionally mandates that a trademark must be represented graphically, making it almost impossible for scents. Therefore, Olfactory trademarks remain largely unaddressed in India. While some scholars argue that this represents a restrictive interpretation of trademarks in India, even the Trademark Rules, specifically Rule 26(5), only address the non-traditional trademark of sound and its registrability criteria.
In March 2023, Japanese company Sumitomo Rubber Industries, Ltd filed an application for an Olfactory trademark in India. The graphical representation of the trademark has been provided as “floral fragrance/ smell reminiscent of roses as applied to tyres.” , it was however, not graphically represented. The application remained unsuccessful after re-examination by the trademark registry.
hearing will be appointed in the matter. It is likely that this application clears the air regarding the stringent graphical representation requirement and recognizing the inherent value of registering olfactory trademarks.
A scent to be qualified as trademark
Non-functional in nature: What criteria should a scent meet to become a trademark? For a scent to qualify as a trademark, it must be distinctive and not functional. The scent should be unique enough to identify the source of the product and not merely serve a utilitarian purpose, such as masking unpleasant odors. The scent must also not be a functional aspect of the product.
For a smell to serve as a source identifier, it must be representable. This representation cannot solely rely on the product's inherent nature, such as perfumes or car fresheners. Instead, the scent must exist in addition to the product's functionality. For instance, while a tennis ball manufacturing company could potentially trademark tennis balls that smell like freshly cut grass, the iconic fragrance of Chanel No. 5 would not be registrable as a trademark.
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