The smell of roses. Is it that common? Registration of India’s First Olfactory Mark – Rose Scent for Tyres

In a first India’s Trade Marks Registry accepted a smell mark for registration, stirring conversations among the IP and non-IP communities alike (order here). The application, on a proposed to be used basis, was filed by Sumitomo Rubber Industries Ltd. for “floral fragrance/ smell reminiscent of roses as applied to tyres”. The application dated 23 March 2023 was made under Class 12 – tyres for vehicles as per the Nice classification. It seems the applicant has a well-established reputation for smell marks having registered UK’s first olfactory mark for the same fragrance (UK 00002001416).

For its Indian application, objections were filed at the examination stage based on lack of distinctiveness [Section 9(1)(a)] and absence of valid graphical representation [Section 2(1)(zb)] as mandated by law. The applicant’s submissions were centered around:

1. Its unique business strategy and product development which includes infusion of floral fragrance of roses into products, especially the fragrant tyres with rose-like scent that have gained the company a unique reputation and distinctiveness globally;
2. Verbal description of the mark explaining that where a smell is well-known (roses, duh!) to the public, such is sufficient for representation. Quoting Shakespeare it was attempted to establish that the scent of roses is commonly understood and widely recognized;
3. On distinctiveness, the application of scent to a product in this case of roses to tyres is a unique combination requiring no further description.

Following the objections raised, crucial intervention was made by amicus curiae Mr. Pravin Anand to support the applicant’s case with a report that established the distinctiveness of the fragrance graphically. In conjunction with scientific support from the Indian Institute of Information Technology, (IIIT) Allahabad, this graphical representation was made possible. The smell was visualized as a complex vector in a 7-dimensional space where each dimension is defined as one of the seven fundamental smells: floral, fruity, woody, nutty, pungent, sweet, and minty.

Image – graphical representation of rose-like smell

Final order and analysis by The Controller General of Patents, Designs and Trade Marks (CGPDTM):

1. The definition of “mark” [Section 2(1)(m)] although does not explicitly mention smell marks is inclusive in nature, allowing for more categories of marks to be envisaged within its ambit.
2. The requirement of graphical representation is now satisfied. However evaluating its capability to fulfill the criteria for registrable trademarks under the Indian law, it was noted that precise graphical representation is not be possible in such cases as opposed to word or device marks. This alone cannot be the reason upon which to refuse the application. Rather when analyzed with an unbiased approach, the application (and its subsequent approval) can set an example for others working in the field of smells and aromas.
3. A large number of variations are possible with word marks however with smell marks this may not be possible, reducing the potential of registration of closely spaced trademarks.
4. On distinctiveness the arbitrariness of the relationship of well-known scent of roses to tyres was found sufficient.

Comments:

While this registration does set a unique example caution must be held as to not treat the domestic trade mark law loosely.

The text accompanying the graphical representation merely says “A complex mixture of volatile organic compounds released by the petals interact with our olfactory receptors, creating a rose-like smell. Using the technology developed at IIIT Allahabad, this rose-like smell is graphically presented above as a vector in the 7-dimensional space wherein each dimension is defined as one of the 7 fundamental smells – floral, fruity, woody, nutty, pungent, sweet and minty.” Does this description fit the test established by the European Court of Justice in the Sieckmann case, ruling that representation for a non-conventional mark must be clear, precise, self-contained, intelligible, durable, and objective. It is to be noted that neither Indian law nor policy prescribe cutting back on the requirement of graphical representation.

While the arbitrary attachment of rose scent to tyres does make a unique case for the applicant, should it be the sole reason to eliminate the need for establishing evidence of acquired distinctiveness in case of unconventional trademarks? Distinctiveness is a foundational principle for a majority of trademark laws requiring a rather careful consideration but the order here reads a flexibility that is again not what the domestic law provides. Moreover the statement “in the field of smell marks a large number of variations around the smell, for instance the smell of roses, may not be possible.” is somewhat problematic. It is widely known that the smell of roses depend on several factors such as weather and do vary widely. This can make it challenging to build a common understanding of the exact fragrance a consumer would tend to perceive when smelling rose-scented tyres! Subjectivity, you see.

Finally I think the fundamental formula to test a mark’s eligibility under the Indian law is a sum of graphical representation and distinctiveness coupled with the Sieckmann principles to further evaluate non-conventional marks. Dilution of these will open a can of worms that can threaten India’s TM ecosystem.

Authored by: Ms. Hetvi Trivedi