The Olfactory Odyssey: A Journey from Nose to Laws of Various Jurisdictions

INTRODUCTION

An article that delves into a world where the law meets the nose, and our sense acts as our guide while we navigate the fragrant corridors of the IPR law where every aroma is waiting to be recognized as a potential trademark. Just as we feel déjà vu when we smell some fragrance, the scent, aroma holds a power to leave an indelible impact on our lives and we instantly associate it with that particular situation, place, person etc. that eventually leads us to purchase a particular product. But in the tapestry of IPR, and specifically in India, the aromatic oasis awaits exploration i.e., Olfactory trademarks, which is one of the non-conventional trademarks. As the society evolves, various concepts also seem to be evolving with them such as with the growth of certain technology, there are certain kind of non-conventional trademarks that have emerged in the market. For instance, the trademarks of sound, taste, smell etc.

NON-CONVENTIONAL AND OLFCATORY MARKS:

Non-traditional trademarks are those trademarks which are new and resonates with the dynamics of the interpretation of the IPR considering the evolving nature of the law with time. These trademarks do not fall under the ambit of the conventional trademarks as the name suggests. The trademarks such as of smell, color, taste are those which are the niche trademarks, which various jurisdictions are either trying to inculcate in their laws or have already done or made a completely separate law for it. These trademarks are not limited to words, symbols, name, device etc. but goes beyond them. The contention that remains is the graphical representation of such trademarks.

There are three types of olfactory trademarks: Primary olfactory trademarks which are identified as those smell marks on the goods which are intended to emit a fragrance such as Perfumes and Deodorants. The Secondary olfactory trademarks, which includes all the goods that do not have the primary purpose of producing a smell but yet identify themselves with certain aromas like soap, detergents and floor cleaners. The third category of trademark is called ‘unique scent marks’ refers to the trademarks that are associated with the products that do not increase their aroma, for instance- when an item of apparel or jewelry is scented. Fragrance is one amongst the most influential human senses, and it has become a focal point for corporations seeks to forge strong associations between their products and particular aromas.[1]

TRIPS AGREEMENT

The “Trade Related Intellectual Ptoperty Rights Agreement” which is applicable to 164 members of the WTO and is the underpinning of the IPR laws in India as it includes trademarks, patents, copyright, GI etc. Article 15 of TRIPS states that “Signs, specifically words, including personal names, letters, numbers, figurative components and any combinations of these signs, are eligible for trademark registration”. Thus, specifically excluding smell, flavor, sounds, etc. It enables the member-nations to ascertain as to what can be registered as trademarks in coherence with whatever is mentioned in the Section 2, Article 15 of the Agreement.

LAWS IN INDIA

Section 2(1)(i)(viii)(zb) of the Trademarks Act, 1999 defines trademark and it is safe to say that earlier trademarks included logos, taglines, and symbols. However, the graphical representation is what is to be registered as a prospective trademark, that poses a formidable hurdle for the registration of an olfactory trademark as it cannot be represented graphically.[2]In India, the Act nowhere mentions about the smell or aroma which can be registered as a potential Trademark. However, the Zippo Manufacturing Industry has registered a design of a product thereby setting a benchmark for the registration of non-conventional trademarks.

The trademark Manual on the other hand, elucidates in its comprehensive essence, is mandated solely to discern the products of one entity from those of another.[3]

LAWS IN UK

The very first instance of an olfactory mark comprising the floral rose aroma that is incorporated in the vehicle tires were employed by Sumitomo Rubber Company in the United Kingdom. The trademarks in the UK are primarily governed and regulated by the Trademarks Act, 1994. The very first example where the Chanel brand registered it signature perfume fragrance product as “Chanel No. 5”.

LAWS IN US

United States is one such nation that has its own Act i.e., The Lanham Act, 1946 for the effective registration of olfactory trademarks primarily on two relevant factors: non-functionality and distinctive features. It protects those trademarks and proprietary rights of its holders.

The landmark judgement of Qualitex Co. v. Jacobson Products Co.held that the trademark can be “almost anything at all that is capable of carrying meaning” [4]necessarily leading to include the scent marks within its ambit. the very first olfactory trademark featuring the distinctive floral aroma of plumeria blossoms utilized in embroidery yarn and stitching thread by Osewez.[5] The Registration process involved a meticulous assessment of consumer association between the plumeria blossom scent and the aforementioned textile materials, with particular emphasis on the delineation of this distinctive feature in promotional endeavors, serving as a pivotal consideration in the grant of registration.

Another famous olfactory trademarks case is of Re Clarke Case: The application for a smell mark for scented embroidery thread was denied by the USPTO. The rejection rationale stemmed from the inability to establish a connection between the yarn’s origin and scent. Afterwards, the applicant won the case after filing an appeal with the Trademark Trial Appeal Board (TTAB). Ultimately, the Trade Commission of Australia (TTAB) ruled that the Plumeria bloom scent, the brand that is associated with, unique and able to set the items apart from competitors.It was held that there should be no  nexus between the smell and function of the good it is applied to which is famously known as the functionality doctrine of protection.

The doctrine was further explained in the case of In Louboutin v. Yves Saint Laurent America Holding, Inc.[6], and precluded the functional feature of a product under trademarks and opined that they be protected under the patent systems. Essentially, two facets of functionality serve as a defense against trademark infringement allegations:

• traditional or utilitarian functionality; and

• aesthetic functionality.[7]

In essence, the registration of non-conventional trademarks such as smell, sound, or other non-visual matter, capable of being verbally described are safeguarded under the US laws.[8] The NBC jingle is considered as one of the prime examples of non-conventional trademarks to be registered in 1970 under the category of sensory marks.[9] This underscores the adaptability and openness of the United States’ approach towards the trademark by accommodating latest technological developments.

SIECKMANN SEVEN-FOLD TEST:

The famous case of European Court of Justice of Ralf Sieckmann v. Deutsches Patent und Markenamt[10]pertains to the Applicant’s pursuit of the registration of an Olfactory trademark, which was denoted as a distinctive mark using a chemical formula, a representation and the provision of an exemplar of the scent. The Court in this case elaborated the definition and held that the graphical representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. The seven-fold test is not only applicable to the olfactory marks but extend its scope for the other non-traditional trademark in general.

CHALLENGES:

The major challenge that arises during the registration is contention of the parties that is the non-conventional trademarks cannot be represented graphically. However, after the Sieckmann’s test, it came to the limelight that olfactory trademarks could be represented graphically by using their chemical formulae but the European Court denied such contention as it would amount to registering the ingredients used to register a particular smell/ aroma. Another challenge posed by the Olfactory trademark is that smell or the aroma is particularly affected by the change in temperature, humidity, and wind conditions. The various catena of judgement of various jurisdictions makes it abundantly clear that smell cannot be represented graphically which a prime requirement for the registration of a trademark.

Another challenge that arises in the registration of non-conventional trademarks is the distinctiveness of the product. It is imperative to ascertain that the smell or scent has not been acquired from the natural characteristic that the smell or scent holds.

SUGGESTIONS:

There are various methods as to how a smell trademark or the olfactory trademark comprising of a scent, fragrance or odor is capable of representations. These are the techniques, which Indian jurisprudence can inculcate while registering the olfactory trademark.

  1. Sensory assessment:
  2. Scentography:
  3. Digital Scent Technology
  4. An electronic nose
  5. A scent dome

Such trademarks need to be recognized at the earliest as it is the need of the hour considering that the dynamism of the world with the evolving technology. Also, various tribunals could be constituted wherein the olfactory experts are made to preside over the registration of such trademarks with the appropriate technology.

CONCLUSION

The distinguished capacity of the trademarks is to leave a lasting impression on consumers’ minds, facilitating the differentiation of one trader’s goods from another’s. While distinctiveness is an innate quality of trademarks, the graphical representation of various marks is a pivotal criterion with the evolution of the trademarks law. Further, in the backdrop of India’s Trademark registration, the law does not permit the registration of such non-conventional trademarks. While in various jurisdictions, the registration of such trademarks is allowed through various legislations. Thus, it is imperative to devise solutions rather than sidestepping the issue and withholding registration for such marks as we unfold new technology and dynamics in the world.


[1]http://%20//www.wipo.int/wipo_magazine/en/2009/01/article_0003.html

[2]Trade Mark Rules, 2017, Rule 26(1).

[3]The draft Manual of Trade Marks Practice and Procedure, Section 3

[4]https://www.worldtrademarkreview.com/article/1D2ADF45887336AF077BC56F43361C7833CFFD35/download#:~:text=In%20other%20words%2C%20although%20a,to%20show%20any%20such%20identification.

[5]Qualtitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995)

[6]Brunswick Corp. v. British Seagull Ltd., 514 U.S. 1050 (1995).

[7]Craig Allen Nard, Michael J. Madison, Mark P. McKenna, The Law of Intellectual Property (wolters Kluwer Law And Business, 2017)

[8]http://%20//www.kmob.com/pdf/Sounds_Smells_Shapes_and_Colours.pdf

[9] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2012).

[10] Ralf Sieckmann v. Deutsches Patent and Markenamt, Case C-273/00, 2002

About Shreya Gupta 3 Articles
Shreya Gupta is 3rd year student pursuing BA. LLB. (H.) from NLU, Sonepat. In her pursuit of diverse knowledge, she has a keen interest in various laws such as IPR, IBC, Dispute Resolution, etc. Her passion for the law extends to her involvement in writing, research and attending various seminars.

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