January 27, 2021

Smell Marks- A Stumper in India?

intellectual property rights

“Delightfully fresh and mild with a little zestness of lime”. Can you feel the smell or do you try to think about it in your mind or it starts fading away after sometime? These are the questions faced by most of the trademark registries in the world when there is a question of registering a smell trademark.

Trademark defined under Section 2(zb) of the Indian Trademarks Act, 1999 which is in compliance with the TRIPS provisions says that a mark which is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others and it may include the shape of goods, packaging or combination of colors. This definition is not inclusive of non-conventional marks like smell, sounds, tastes, silhouettes,etc. The invasion of these marks from the definition of the trademark is due to the abstract nature of the definition.

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The Trade Mark Rules, 2017 (“The Rules”) has provided a distinct acknowledgement to the non-conventional marks by validating the registration of some definite kinds of colors or sounds as long they are able to be represented graphically. It still follows the traditional approach of representing the graphical representation of a trademark which is not possible in case of smell marks.

One of the first cases for giving reasons for the graphical representation of trademarks was European case of Ralf Sieckmann v German’s Patent Office (Case C-273/00). The reasons for graphical representation given in this case were:

● Precise subject of protection given by registration can be determined;

● Competent authorities must know what the mark is with clarity and precision so that they can fulfill obligations;

● Economic operators must be able to by consulting the register should be able to find out with clarity the registrations and applications made by any potential competitor or getting information for any 3rd party.

In the case ECJ elaborated upon the criteria for graphical representations of trademarks, that the marks should be:

● clear,

● precise,

● self-contained,

● easily accessible,

● intelligible,

● durable and

● objective.

The result of applying these criteria in this case was that smell or scent marks can be registered in theory but unlikely to be successful in practical scenarios.

In this case. Ralf Sieckmann applied to the German trademark registry for the registration of a scent mark for various services. The ECJ ruled that the methods of representation given by the applicant were problematic. The description of the scent as “balsamically fruity with a slight hint of cinnamon” was easily accessible and intelligible but it was not clear, precise or objective as it was not able to answer the questions that what is a fruity scent or how much cinnamon does ‘hint’ refers to. A chemical formula was given by the applicant which was objective but it was not intelligible to a layman and not self-contained as it required external reference to understand it. It also referred to the substance and scent so it was not directly represented.

These standards adopted under this case for graphical representation were strictly implemented under the Indian Draft Manual of Trade Marks, 2015, which although lacked the force of law noted that smell marks cannot be represented graphically under the Indian Trademark law.

Under the Trademark Rules, 2002 it is mandated under Rule 25(1)(2)(b) that a trademark registration application must include graphical depiction of mark. Rules 28 and 30 require it to be represented on paper in durable form. As compared to a sound mark, an olfactory mark cannot be identified visually – so this acts as an hindrance to the registration of such marks in India.

One of the most basic challenges that is faced by the smell marks is the availability or accessibility of the smell to the person purchasing the product. If the person is not able to recognize the smell then the whole purpose of using the smell as a trademark gets defeated as the person is not able to connect the smell to its origin which is one of the reasons for that smell to be used as a trademark. Another challenge that can be faced by the purchaser is that even though he recognizes the smell he might not be able to connect it with its identity to its manufacturer or basically the product and so, it leads to confusion in the minds of the consumers.

The most important limitation that is associated with smell marks is the functionality doctrine. This doctrine says that protection is not available to those marks which are entirely functional. The doctrine is an anti-competitive measure taken for preventing a single producer to get monopoly over a useful product feature that the products in the same domain of competition might be sharing. It is reflected under Section 9(3) of the Indian Trademarks Act, 1999 which states that in the context of shape marks a shape which results from the nature of the good or for obtaining a technical result is prohibited from registration.

We can say that these non-conventional marks like smell and sound marks can be made to cater those consumers in society which are visually impaired or illiterate i.e. which have difficulties in having a visual recognition of these marks. These marks help to adopt and develop new ways of advertising and branding their products, making these companies reaching out to newer markets and sets of consumers. There have been very few registered smell marks till now like a Dutch company’s tennis balls with a scent of “newly cut grass”, U.K. registrations of tires with “a floral fragrance/ smell reminiscent of roses” and darts with “ a strong smell of bitter beer”.

There is no doubt that smell or scent marks seem to be very innovative, new and appealing in their approach for branding and selling products still there has always been difficulty for the traders to get it registered under the trademark law because of the difficulties associated with it like to not be able to be represented by the traders on paper in the trademark registries, lacking to be as the basis for identifying the origin, the theory that smells start depleting or fading and being of subjective nature it changes from person to person so, every person perceives it differently. These difficulties impact these marks negatively and affect the efficeincy of these marks.

The registration of smell or scent marks in India is still at an early stage in India and Indian trademark law being modelled in compliance with TRIPS agreement there is highly a chance for Indian law to provide recognition to these smell or scent marks by Indian law without giving it an international precedent.

Author Details: Kashish Yadav is a student at University of Petroleum and Energy Studies, Dehradun.

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