Fragrance as a Trademark

Introduction

A trademark can be defined as any sign that identifies the goods of an enterprise and distinguishes them from the goods of its competitors. Trademark helps in marketing of a particular good or service by the producer because it helps in easier recognition and also assures quality. According to Article 16 of the Agreement on Trade Related Aspects of Intellectual Property Rights, the owner of a mark can prevent the use of similar or identical signs by competitors if such marks leads to confusion among the customers. By this way similar low quality substitutes will be prevented from replacing good quality ones. The distinctiveness further helps in sales as people are easily able to identify with a particular commodity or service. A trademark is thus, a device that gives distinctiveness and unique identification to a particular product or service. However, an increasing number of countries also allow for the registration of less traditional or non-traditional forms of trademarks such as single colours, three dimensional signs (shapes of product packaging), audible signs (sounds) or olfactory signs (smell).

Need for Scent or Olfactory Trademarks

The ability to identify smells is one of the most important senses that a human being possesses. The aroma of coffee, the smell of a person’s favourite food, these smells once experienced will never be forgotten by the human brain. With the rapid advancements in technology, companies have tried to use smells/scents as trademarks and register them to further capitalize on the market. It is imperative that the description of the smell has to be so precise that it should not be confused with any other smell, otherwise the mark would be rejected on the ground of similarity. Further, smells which can be defined in terms of chemical components chromatographically or even by reference to elements in the product which cause them, may be registrable.

International Perspective

United States

The first case in the U.S. to specifically address and registeran olfactory mark was In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990). The U.S. Patents and Trademarks Office (USPTO) Trademark Trial and Appeal Board or TTAB reversed the examiner’s decision that the applicant’s Plumeria blossom scented sewing thread and embroidery yarn mark was not registrable on the principal register. The argument by examiner was that the applicant failed to explain how the Plumeria scent acted as a source indicator to consumers, and that it was de jure functional because of the competitive need for free access to pleasant scents or fragrances i.e. it does not distinguish itself from the products of her competitors.

However, the applicant stated that by advertising her products as scented she has created a sense of belongingness and uniqueness in her products. All the customers, distributors, dealers could identify her products to have a unique scented effect which no other sewing thread or embroidery yarn provided in the marker at that time. Also due to prolonged use and advertisements, the aim was to assert that the Plumeria scent is not inherent but an added feature which has no other use but to make the product more pleasant and unique.

According to Section 2(e)(1) of the U.S. Lanham Trademark Act of 1946, a particular fragrance of a product has been held that a term is unregistrable, if it merely describes an odor or other significant feature of the product. This means that the scent of a product may be registerable if it is used in a non-functional manner. 

The court, while overruling the decision given by TTAB, held the registration of Plumeria Blossom scented sewing thread and embroidery yarn mark to be valid. It further stated that the two important evidences needed to registration of a scent mark are:

European Union

In Ralf Sieckmann v. Deutsches Patent-und Markenamt Case (ECJ Dec. 12, 2002), the European Court of Justice opined upon the issue of graphic representation of scent marks. It laid down seven specific criteria known as the Sieckmann criteria which stated that if the sign can be graphically represented by means of images, lines or characters in a clear, precise, self-contained, easily accessible, intelligible, durable and objective way, the sign may be eligible for registration. Another requirement is that the distinctiveness of a scent mark, as with any trademark, must not result from the nature of the goods themselves. The ECJ in this case rejected application for registration of methyl cinnamate olfactory mark on the ground that it did not meet the criteria for graphical representation. 

In 1994, the United Kingdom rejected the registration of the scent of Chanel No. 5 perfume, as it was the essence of the product, i.e. the principle of non-functionality was inapplicable. This is due to the fact that fragrance is the main reason for the existence of the product and is not independent from it. Further, the common scents that have been accepted by OHIM include the written descriptions of “the smell of fresh cut grass” for tennis balls and “the scent or smell of raspberries” for engine fuels. However, the latter was later rejected on the ground that the mark was not distinctive in relation to the goods. The Sieckmann judgement has laid down stringent parameters for incorporation of scent marks in the EU. In fact, mark “the smell of fresh cut grass” lapsed in December 2006 as a result of non-renewal, and probably there appears to be no community scent marks on the register as on today.

Indian Scenario

The Indian Trademarks Act defines trademarks as 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. The Rules define graphical representation to mean the representation of a trade mark for goods or services in paper form. Thus, it can safely be asserted that graphical representation is indispensable for TM Registration in India. Distinctiveness is yet another important criterion which needs to be satisfied by a mark in order to be registered. 

The proviso to section 9 (1) of the Trade Marks Act, 1999, recognizing the concept of acquired distinctiveness inter alia provides that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made out of it. This type of mark may also be known as a well-known trade mark.The Indian system having no precedent in this aspect, depends greatly upon the precedents of the European Union and the United States. Registration of fragrance/scent/smell mark in India as trademarks is a difficult task, as visual representation along with distinctiveness are indispensable features for its registration. The main problem is representing a smell visually. Graphical representation through chemical formula of the smell has been held insufficient as a chemical composition represents the substance rather than the actual smell itself. 

Conclusion

Therefore, though graphical representation and secondary meaning associated with non-traditional trademarks are indispensable, the principle of representation imposes a greater hurdle for the registration of smell marks. In such cases a practical and cost–effective solution must be devised which would not only eliminate the condition for graphical representation of olfactory marks but also maintain its distinctiveness, thereby making the mark registerable. Once, the scent/fragrance mark is registered, its user can seek protection under the Trade Marks Act, 1999.