Author : Kumarappan M , 3rd year Student at School of law, Sastra deemed university, Thanjavur,tamilnadu,India
Abstract
The registrability of smell marks, a unique category of non-conventional trademarks, presents intriguing challenges and opportunities in intellectual property law. While the sense of smell holds immense potential for brand identification, its subjective nature and the difficulties of graphical representation create legal and technical hurdles. This paper explores the evolution of smell marks globally, examining the legal frameworks of countries like the United States, European Union, United Kingdom, New Zealand, and India. It discusses the requirements of distinctiveness, non-functionality, and graphical representation for smell marks, alongside landmark cases such as Sieckmann and In Re Clarke. The paper highlights India’s cautious stance on smell mark registrability, emphasizing the need for clear legal provisions and technological advancements. Recommendations include revising trademark laws, developing alternative representation methods, and fostering international collaboration. This study underscores the critical need for harmonized global standards and innovative solutions to address the challenges of registering olfactory trademarks.
Keywords
Smell marks, non-conventional trademarks, olfactory trademarks, graphical representation, intellectual property law, distinctiveness, trademark law, India, United States, European Union, Sieckmann, non-functionality, global standards.
“The Evolution and Challenges of Smell Marks: A Global and Indian Perspective on Registrability”
Introduction
Despite being the least explored among the five human senses, the sense of smell plays a vital role.Humans have the ability to recall and distinguish 1000s of different fragrances. The sense of smell allows individuals to perceive scents with each breath they take. Smell has the ability to influence and activate an individual’s memories as well as their mood, cognition, and behaviour.
1. DEFINITIONS
- What is a Trademark?
Section 2(1)(zb)
Rule 2(k) of the trade marks rules 2002, the trademark that is being claimed must be able to be graphically depicted. A trademark is a sign, symbol, or combination of words, colors, designs, or shapes that distinguishes goods or services of one entity from others in the marketplace. It serves as a badge of origin and is a critical aspect of brand identity.
1.1.1 Non-Conventional Trademark
Non-conventional trademarks refer to marks that do not fall under traditional categories like words or logos. They include sounds, smells, tastes, motions, holograms, and color marks.
1.2 What is a Smell Mark?
A smell mark is a type of non-conventional trademark where a specific scent or odor is used to uniquely identify a product or service. section 2(1)(m) of the Trademark Act, 1999 defines “mark” as a device, brand, heading, label,
ticket, name, signature, word, letter, numerical, shape of products, packaging, or colour combination.smell mark is not explicitly defined under act
2. REGISTRABILITY OF SMELL MARK
2.1 Distinctiveness
For a smell mark to qualify as a trademark, it must possess distinctiveness. This can be either:
1. Inherent Distinctiveness – The scent is unique and immediately identifiable as associated with the product or service.
2. Acquired Distinctiveness – The scent has gained recognition through consistent and long-term use in commerce, establishing a link with the brand in consumers’ minds.
2.2 Graphical Representation (Section 18)
To register a trademark, most jurisdictions require it to be represented graphically. This poses a challenge for smell marks.
2.3.1 Attempts to Graphically Represent Smell Marks
• Chemical Formulas: Using the chemical structure or formula of the scent.
• Color-Coded Systems: Associating colors with specific scents to create a visual identifier.
2.3.2 Other Attempts to Graphically Represent Smell Marks
• Advancements in Digital and Sensor Technologies: Developing electronic means to digitally encode or reproduce scents for legal representation.
3. REGISTRABILITY OF SMELL MARK IN DIFFERENT COUNTRIES
3.1 POSITION IN THE UNITED STATES:
Smell marks are eligible for registration under Section 2(f) of the Lanham Act, as scents are not explicitly excluded.
Criteria for Registration:
Non-functionality, uniqueness, or acquired distinctiveness.
No requirement for graphical representation like india.
In Re Clarke (1989): USPTO allowed the registration of a Plumeria blossom fragrance for thread and embroidery yarn after proving it was non-functional and distinctive.Quintex Co. v. Jacobson Products (1995) Emphasized distinctiveness as the key purpose of a trademark.In Re Pohl-Boskamp GmbH (2013) Denied registration for a peppermint scent and flavor for nitroglycerin spray, citing functionality and lack of distinctiveness. The United States Patent and Trademark Office (USPTO) recognizes smell marks provided they are distinctive and non-functional. For example, the scent of plumeria flowers for sewing thread is a registered smell mark.United States Patent and Trademark Office (USPTO) granted Crayola Federal trademark for its crayon scent in July 2024The U.S. adopts a selective approach, approving only scent marks that are identifiers and lack any functional component.
3.2 POSITION IN EU COUNTRIES:
Smell marks are permitted under Article 4 of the EUTMR, but representation issues make registration challenging.
The Sieckmann Case (2003) introduced the “Seven-Fold Test” for graphical representation, requiring it to be clear, precise, durable, and objective.In 2017, the EU Trademark Reform eliminated the strict requirement for graphical representation, allowing for more flexible methods.Odeur de Fraise Mure (2005) Rejected registration for a “ripe strawberry scent” due to vague representation.
Despite legal acknowledgment, no smell trademark has been successfully registered due to representational challenges.
3.4 POSITION IN THE UNITED KINGDOM:
UK law permits smell marks, influenced by EU regulations. Graphical representation remains a critical issue.Sumitomo Rubber Industries Successfully registered a floral scent for tires.Unicorn Products Registered a beer-like scent for dart flights. Sieckmann Case (supra)InfluenceReinforced the need for comprehensive and precise graphical representation.
Although theoretically permissible, practical obstacles make it challenging to register smell marks in the UK.
3.5 POSITION IN NEW ZEALAND:
New Zealand recognizes smell marks as non-traditional trademarks, but successful registration is rare.
Criteria for Registration: The scent must not be a natural or functional characteristic of the product (e.g., perfumes or air fresheners are ineligible).
It must be distinctive and widely recognized.
Boots Company Plc (1995): Attempted to register a cinnamon scent for pharmaceuticals but failed due to lack of distinctiveness.Though legally possible, practical and technical limitations hinder the registration of smell marks.
3.6 POSITION IN INDIA:
Smell marks are not explicitly recognized under the Trade Marks Act, 1999, but broad definitions under Sections 2(1)(zb) and 2(1)(m) leave room for future acceptance.Developments are the Draft Manual of 2009 discussed non-traditional marks but has not been implemented.Visual representation is required under Rule 25 (12)(b) and Rules 28 & 30 of the Trade Marks Rules, 2002.Sumitomo Rubber Industries(2023) Applied to register a floral fragrance for tires in India; if approved, this could be the first successful smell trademark in India.
The Indian legal framework lacks clarity and established precedents, making smell marks difficult to register.
Global Trends:
The U.S. is more open to smell marks if non-functional and distinctive, while the EU and UK face representational challenges. New Zealand and India remain cautious and restrictive.
Representation Issues:
Graphical or precise representation is the biggest hurdle globally, even in progressive jurisdictions.
India’s Future:
Sumitomo’s application could pave the way for recognizing smell marks in India, urging legal reforms.
Indian Context
Indian trademark law currently does not explicitly recognize olfactory trademarks. The Trade Marks Act, 1999, and the Trade Marks Rules, 2017, focus on visual and graphical representation. Although there is no explicit prohibition on registering olfactory trademarks, the existing legal framework lacks clear provisions or guidelines for their registration.Representation Issues of Graphical or precise representation is the biggest hurdle globally, even in progressive jurisdictions.India’s Future relied on recent application by Sumitomo Rubber Industries indicates a potential shift towards acknowledging non-traditional trademarks in India. However, without clear legal provisions and precedents, the registrability of such marks remains uncertain.
Global Perspective
Globally, the registrability of olfactory trademarks varies:
• United States: The U.S. Patent and Trademark Office (USPTO) has granted registrations for scent marks in certain instances, provided they are distinctive and non-functional. For example, the scent of plumeria blossoms for sewing thread has been registered.
• European Union: Following the Sieckmann ruling, the EU has stringent requirements for the graphical representation of scent marks, making such registrations challenging.
• United Arab Emirates: Under the Federal Decree-Law No (36) of 2021, “smells” are included within the definition of a trademark, indicating a broader acceptance of non-traditional marks.
RECOMMENDATIONS
1. Create Comprehensive Standards for Graphical Representation: Develop precise mechanisms, such as digital encoding or chemical representation, for registering smell marks.
2. Consider Potential Revisions to the Trademark Act of 1999: Amend the Indian statute to explicitly include non-conventional trademarks like smell marks.
3. Implement a Flexible Distinctiveness Criterion for Scent Marks: Recognize acquired distinctiveness through consistent use in commerce.
4. Frame Proper Definitions: Broadly interpret trademarks to include non-conventional types in Indian trademark law.
5. Develop Alternative Forms of Representations: Encourage the use of technology and scientific methods for accurate representation of smell marks.
6. Enhance Awareness Among Companies and Intellectual Property Experts: Conduct workshops and seminars to educate stakeholders about non-conventional trademarks.
7. Leverage Digitalization Technology: Develop advanced tools and software for encoding and verifying scents.
8. Establish a Pilot Program for Scent Mark Registration: Pilot schemes could be launched in collaboration with scientific and legal experts to test the feasibility of smell mark registrations.
9. International Collaborative Initiatives: Promote cooperation among nations to harmonize the standards for smell mark registration globally.
Conclusion
The use of fragrances as trademarks raises significant questions, especially given their subjective perception and the challenges in ensuring distinct identification and consistent replication. According to an international questionnaire conducted by WIPO, only 20 out of 72 trademark offices recognize aromas and fragrances as registrable marks. Consequently, not all smells are eligible for trademark protection, as they must possess a distinct and inherent characteristic.
The registration of olfactory trademarks remains a complex area of intellectual property law, with significant variations across jurisdictions.
References
1. Calboli, I., & Senftleben, M. (Eds.). (2018). The Protection of Non- Traditional Trade Marks: Critical Perspectives. Oxford University Press.
2. Economic Rationale for Extending Protection to Smell Marks.
3. Gervais, D. J. (2020). The TRIPS Regime of Trademarks and Designs (4th ed.). Wolters Kluwer.
4. McCarthy, J. T. (2017). McCarthy on Trademarks and Unfair Competition (5th ed.). Thomson Reuters.
5. Dinwoodie, G. B., & Janis, M. D. (2010). Trade Dress and Design Law. Aspen Publishers.
6. Trade Marks Act 1994.
7. Ralf Sieckmann v Deutsches Patent und Markenamt. .
8. A Trademark Could Be A Smell Mark: A Comparative Analysis Of US,UK and India.
9. Registration of Unconventional “Smell” Trademarks.
10. Trade Mark Protection for Smells, Tastes and Feels. (2022).
FAQs for “The Evolution and Challenges of Smell Marks: A Global and Indian Perspective on Registrability”
1. What is a smell mark?
A smell mark is a non-conventional trademark where a specific scent or odor is used to uniquely identify a product or service. While it is not explicitly defined under the Indian Trade Marks Act, 1999, the broad definition of a “mark” under Section 2(1)(m) includes the possibility of recognizing smell marks in the future.
2. Why are smell marks considered non-conventional trademarks?
Smell marks fall outside the traditional categories of trademarks like words, logos, or designs. Non-conventional trademarks include sound marks, taste marks, motion marks, color marks, and smells, which require distinctiveness and often face challenges in graphical representation.
3. What are the main challenges in registering smell marks?
• Distinctiveness: The smell must be inherently unique or have acquired distinctiveness through long-term use in commerce.
• Graphical Representation: Most jurisdictions require trademarks to be represented graphically, and scents are inherently difficult to visually depict.
• Functionality: The smell must not be a functional aspect of the product (e.g., perfumes or air fresheners are often disqualified).
4. How is distinctiveness evaluated for smell marks?
Distinctiveness is evaluated based on two criteria:
1. Inherent Distinctiveness: The scent is unique and directly associated with the product or service.
2. Acquired Distinctiveness: The scent has gained recognition over time and is identified by consumers with the brand.
5. How do countries differ in their approach to smell mark registration?
• United States: The USPTO allows the registration of smell marks if they are non-functional, distinctive, and can be described clearly, without a strict requirement for graphical representation. Examples include the scent of plumeria blossoms for sewing thread.
• European Union: Under the Sieckmann ruling, smell marks require precise, clear, and objective representation. However, graphical representation challenges have made successful registrations rare.
• United Kingdom: Smell marks are recognized but face similar graphical representation hurdles.
• New Zealand: Smell marks are theoretically allowed, but registrations are rare due to strict distinctiveness requirements.
• India: Smell marks are not explicitly recognized under the Trade Marks Act, 1999, and face challenges due to the requirement for visual representation.
6. What steps can India take to recognize smell marks?
Recommendations for India include:
• Amending the Trade Marks Act, 1999, to explicitly include non-conventional trademarks like smell marks.
• Developing comprehensive standards for the graphical representation of scents, including digital or chemical encoding.
• Encouraging awareness among businesses and intellectual property experts about non-conventional trademarks.
• Piloting scent mark registration programs in collaboration with experts.
7. What are some recommendations to overcome graphical representation challenges for smell marks?
• Using digital technologies to encode scents.
• Leveraging scientific methods like chemical formulas or color-coded systems for representation.
• Exploring advancements in sensor technology for accurate replication of scents.
8. Are there any examples of successfully registered smell marks?
Yes, some examples include:
• The scent of plumeria blossoms for sewing thread (U.S.).
• Crayola’s crayon scent, registered in 2024 (U.S.).
• A floral scent for tires by Sumitomo Rubber Industries (UK).
9. Why is the registrability of smell marks globally inconsistent?
The registrability varies due to differences in legal frameworks, the requirement for graphical representation, and distinctiveness standards. While countries like the U.S. are more open, others like the EU and India have strict requirements that make registration challenging.
10. How does the recognition of smell marks align with branding trends?
Smell marks can enhance brand identity by creating a unique sensory experience for consumers. However, their subjective nature and the technical challenges of representation pose significant legal and practical obstacles.
11. What does the future hold for smell marks in India?
If the pending application by Sumitomo Rubber Industries is approved, it could signal a significant shift in Indian trademark law. This may encourage legal reforms to accommodate non-conventional trademarks like smell marks.