Short summary – Taste, from kitchen staples to luxury experiences, serves as a remarkable identifier of brands. This article discusses the challenges in trademarking taste including subjectivity, graphical representation and identification. A significant challenge i.e., Doctrine of functionality is analyzed as well. Finally, the article discusses future possibilities, including how digital flavor technology can overcome these barriers.
India is home to 75 out of 109 available spices recognized by International Organization for Standardization (ISO). Despite being a major exporter of spices, India lacks a legal framework to protect taste trademarks. Multiple other non-conventional trademarks like sound and color are recognized, taste remains unprotected. This means that brands that have unique flavors still have to rely on other types of trademarks. There have been attempts to trademark taste internationally, like in the case of In Re Organon, where the European Court rejected the application to trademark “the orange flavor” of their anti-depressant pills.
Challenges of Trademarking a Taste
To understand why it’s difficult to get taste trademarked, we have to first interpret the definition to see if taste fits the criteria.
The Indian Trademark Act of 1999, defines trademark under section 2(zb) 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 colors”. This definition demands that a trademark of an entity must be graphically represented and be distinguishable in nature.
Taste as a non-conventional trademark struggles to meet the criteria of graphical representation. For instance, in the Siekmann case, where the applicants gave a description of the scent as “balsamically fruity with a slight hint of cinnamon” along with the chemical formula. The ECJ in this case rejected the description of the smell thereby establishing that description of non-conventional marks cannot pass the test for graphical representation. The court however emphasized that the description must be precise and objective to qualify as graphical representation. “The United Kingdom Government considers that it is possible that a description in words of an odour could graphically represent it, for the purposes of Article 2 of the Directive. The circumstances in which such a representation would be acceptable are likely to be rare, mainly because it would be difficult to make such a description sufficiently clear and precise properly to represent the sign in question. Thus, if a description clearly allows customer identification, it could pass this test of graphical representation. ”
Another significant issue with trademarking a taste is its distinguishability. Taste is known to be subjective. A person does not perceive a taste like another. Some people are genetically wired to not perceive a taste. Thereby, indicating that taste due to its subjective nature and lack of being able to graphically represent it, is difficult to get a trademark. This argument was raised in the Siekmann case.
Doctrine of Functionality
Subjectivity and graphical representation are not the only limitations leading to taste as a trademark. In a recent US case New York Pizzeria v Ravinder Syal, the court held that a trademark must not be indicative of the quality or characteristic of the product.
Section 9(1)(b) of the Trademark Act 1999, prohibits registration of an application “which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service”. This section states that a taste cannot be an essential element of the product. This evokes the doctrine of functionality. According to which, a trademark cannot be given to the part of the product that is essential to its function. If a restaurant wants to trademark its taste of a well-known recipe it might not win the battle of this doctrine as taste is an essential function of that dish or recipe. This doctrine is used to prevent monopoly. However, a brand that is not connected to food, can surpass this doctrine as taste may not be the essential feature to their function.
Another major challenge raised by the court in the case of Re N.V. Organon that a product’s taste can only be experienced after purchase, complicating brand recognition based solely on taste. The exceptions exist, such as dessert outlets offering samples, but for many packaged foods, this remains a significant challenge.
Is there a solution to these challenges?
The main purpose of trademark is to help customers identify a brand or product before buying it. With technological development like digital flavors, an electrogustometer or a Tag candy system that simulate taste via vibration and smell stimuli and offers new ways to graphically represent taste digitally. (see this paper by J.T Cross). Further Trademark Rules 2017 under section 2(definition clause) defines graphical representation as “representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in digitised form” thereby validating the concept of representing taste digitally. Further, WIPO affirms by relying on its SCT reports, that taste can be graphically represented through a description of the same. Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is a committee under WIPO which discusses to develop international standards and best practices in IPR related issues by facilitating and providing guidance on progressive development on trademarks, GIs and Industrial Designs. The approval of SCT of description of taste as a proof for graphical representation is a step towards its international acceptance.
While the Functionality doctrine often bars the scent and taste trademarks. In the case of M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trademarks, the Calcutta High Court held that the mark “Rasoi” could not be registered for edible oils because it shows the nature of the product. However, this doctrine does not apply when taste is used to identify brands that are not connected to food products.
Subjectivity of taste is another significant barrier to trademarking taste. But unlike colors which have defined pantone shades, taste varies and is perceived differently by different people. When the landmark case of Ralf Sieckmann v Deutsches Patent- und Markenamt.is interpreted, it’s clear that when a description is clear and objective, it may be accepted as a trademark. Subjectivity may be addressed by demonstrating ‘secondary meaning,’ where consumers come to recognize the taste as uniquely tied to a brand through long-term use in the market.
Conclusion
Through digital flavor technology and established principles of trademark such as acquiring secondary trademark, taste can be trademarked. It has to be ensured that the mark is distinctive either inherently or through secondary meaning, ensuring clear graphical representation, and overcoming the Doctrine of Functionality.
Authored by: Ms. Ruthika Haller
Ms. Ruthika Haller a final-year law student at PES University with a strong academic and research interest in emerging areas of law. Her focus lies in technology law, artificial intelligence, cryptocurrency regulations, and the evolving framework of intellectual property rights. She is keen on exploring how law adapts to innovation, particularly in areas such as fintech, data protection, and digital governance. With prior experience in legal research and drafting, she aims to contribute to discussions at the intersection of law, technology, and policy, while building a career in cutting-edge legal domains.”
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