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Tuesday, 6 December 2011

Smells or Scents As Trademarks

The ability to perceive smells is one of the most important senses that a human being posses. The aroma of coffee, the smell of a person’s favourite food, these smells once experienced will never be forgotten by the human brain. Each individual person will have a favourite smell which will remind them of something they like, and so with the rapid advancements in technology companies have tried to use smells as trademarks and register them to capitalise further on the market
However to register smells as trademarks is very problematic as to register a scent an applicant has to be able to represent the scent visually and that particular scent must have  distinctiveness from the product. Here the problems to register a scent begin as representing a smell visually is not an easy thing to do. Some people have tried to write down the chemical formula of the smell but this has held to be insufficient as a chemical formula represents the substance rather than the actual smell. The description of the smell has to be so precise that it should not be confused with any other smell. Smells which can be defined in terms of chemical components by chromatographical analysis or even by reference to elements in the product which cause them may be registrable.[1]
In the United Kingdom on the day of the enforcement of the Trade Marks Act, 31 October 1994, three applications were received for the registration of smell marks. The first application on that day was made by the perfume manufacturer Chanel. They wanted to register their fragrance ‘Chanel No5’.Their application was unsuccessful because the scent of the perfume was the essence of the product. “An attempt to represent a fragrance graphically using some sort of print-out from a HPLC analysis, together with a written description, failed as it was found to be inadequate both by the examiner and the Office for Harmonization in the Internal Market (OHIM) Board of Appeal”[2].
The second application on that day was filed by the Sumitomo Rubber Co; they wanted to register the fragrance of roses as applied to the tyres they manufactured. This application was successful and thus became the United Kingdom’s first olfactory trade mark with the no. GB 2001416
The third application received that day was from was also successful. The application was files by the company Unicorn Products which registered the smell of bitter beer for their product darts. This trademark was registered and became no. GB 2000234
  In the case of John Lewis of Hungerford Ltd’s Trade Mark Application[3] a trademark for furniture was rejected. The applicant applied to register furniture which consisted of the smell or aroma of cinnamon. It was held that the verbal description of the smell was not enough for graphical representation.
The Sieckman case was the landmark case for the registration of olfactory trademarks, it opened up new avenues for the registration of not only scent marks but also unconventional trademarks as a whole. In  Sieckmann v Deutsches Patent- und Markenamt[4]case Mr Sieckman filed application to register “balsamically fruity smell with a slight hint of cinnamon”. He filed the application by providing a chemical formula of the smell along with an odour sample of the chemical sign in a container and described the scent as balsamically fruity with a slight hint of cinnamon. The German Patent Office rejected the application by saying since it could not be represented graphically it did not satisfy the meaning of a trademark. The case was eventually referred to the ECJ. The ECJ held that with relation to an olfactory mark a mere chemical formula will not satisfy the criteria of graphical representation, they went on to say neither would a description of the smell in words or the deposit of an sample of the smell or by any combination of these elements would satisfy the criteria of graphical representation.
The ECJ gave its reasons for passing this ruling in an attempt to clear up the matter, they said that a chemical formula would not meet the graphical representation criteria because it did not represent the smell rather it represented the substance. It further went on to say that the general public would not understand the chemical formula as a smell.
The ECJ also held that a written description was held not be sufficiently clear and precise to qualify as graphical representation. It looked at the written description provided an pointed out that there could be ambiguity as to what was balsamically fruity and what was the amount of cinnamon in the slight hint of cinnamon described.
Further, it stated that the chemical structure and makeup of the sample that was provided could begin to change and degenerate with the passage of time due to any number of factors and this could lead to a change in the smell of the deposited sample which would make the sample useless.
In the United States of America the practice of registering olfactory trademarks is more liberal when compared to Europe. Written descriptions are allowed in the United States for e.g. “the mark is a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms”[5]. This was registered for sewing thread and embroidery yarn in the year 1990.
The US and EU positions are the same when it comes to smells which are inherent in the product itself, both jurisdictions do not allow registration of such a mark.
In India olfactory marks and not expressly prohibited but it follows the same position as the EU and the US for smell to be registered as long as it can be graphical representation and it can be distinctive of the good it will be allowed for registration .However in India there has been so smell trademarks advertised in the trademark journal since the act came into force.

[1] W.R. Cornish, Intellectual Property (Delhi: 1996), pp.583-84.

[2] Institut pour la Protection des Fragrances (IPF)'s Community Trade Mark Application (R-186/2000-4) [2005] E.T.M.R. 42.

[3] John Lewis of Hungerford Ltd's Trade Mark Application [2001] RPC 28.

[4] Sieckmann v Deutsches Patent- und Markenamt [2003] Ch. 487; [2003] 3 W.L.R. 424; [2003] R.P.C. 3

[5] Celia Clarke, Re, USPQ 2d 1238(1990) (TTAB).

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