The Law Relating to Smell Marks

Colours and sounds create vibrations, while touch, smell and taste interact with molecules outside the body to create sensations in the brain.

 

Smell is thought to be the most ancient sense which takes the shortest route to the brain unlike the other senses.

 

Our olfactory network can recognize approximately 10,000 smells, which can be broadly classified into two categories:

 

• Those that we are familiar with and can be precisely named; for example, the smell of oranges, freshly baked bread or petrichor (the smell of earth after rain); and

 

• Those that are incapable of a precise description; for example, a sweet floral smell in contrast to the precise smell of a rose.

 

This short article examines four cases from Europe and USA to highlight the two main issues that have  led to their differing outcomes.

 

Main Issues in Smell Marks

 

In Myles Limited, the Third Board of Appeal in Europe decided that the olfactory mark “the scent of raspberries” for fuel and engine oil etc. is not registerable.

 

The first objection was that the mark is incapable of being represented graphically given that it is a smell. It was argued that the scent of raspberries has been  known from time immemorial and such a scent  is unequivocal and precise.  This smell is not vague and imprecise.  The argument that a chemical formula is a good way of representing the smell was denied, as it would be a description of the substance and rather than its smell.

 

Another argument raised was that the smell would be perceived differently by different people depending upon factors such as concentration, temperature, carrier material, etc.  Hence, it would be subjective.  However, this argument was defeated given that even words and acoustic marks may change according to context or interpretation.  Considering that trademark law requires any sign to be protected, the graphic representation requirement should be interpreted narrowly, especially in the context of marks that are incapable of being described accurately but still discharges a trademark function in the market.

 

It should be noted, the legal requirement would still be met even if the mark was capable of indirect representation, which is particularly true for acoustic or olfactory marks.

 

Having said all this, the decision goes against the applicant on the ground that the consumer would regard the scent of raspberries as an attempt to make the goods fragrant, when such goods would otherwise have unpleasant or neutral odours (e.g., like scented candles).  It would not be seen by the consumers as indicating source.

 

In another judgement Ralf Sieckmann, an attempt to register an olfactory mark for services such as advertising, business management, providing food and drink, computer programming etc. in relation to methyl cinnamate was rejected. The rejection was on the ground: –

 

1. that the mark was incapable of being represented graphically; and
2. the mark lacked distinctive character.

 

Regarding the question on whether European law requires a mark to consist of a sign which is in itself capable of being perceived visually, the court held that it is not essential and that marks can be represented graphically.  This could be in the form of images, lines or characters where the representation is clear, precise, self-contained and objective.

 

The second question was what the requirements of a graphic representation for an olfactory sign are, and if such requirements are satisfied by a chemical formula or a description in written words or a deposit of an odour sample.  In this case, it was held for the chemical formula of methyl cinnamate (i.e. fruity scent with the hint of cinnamon)people, , would not recognize the smell in question by looking at the chemical formula. The formula does not represent the odour of the substance but the substance itself. The description although graphic, is not sufficiently clear, precise, and objective.

 

The cases where registrations were successfully granted for olfactory marks will be discussed below.

 

In the case of VENNOOTSCHAP ONDER FIRMA SENTA AROMATIC MARKETING VS. MARKGRAAF B.V., dated 11.02.1999, the appellant sought to register as an olfactory mark `the smell of fresh cut grass’ for tennis balls in Class 28 of the Nice Classification. The examiner refused the application on the ground that the mark was not graphically represented.

 

The second Board of Appeal of the EUIPO drew a parallel with the registration of sound marks, holding that a description of the music was enough, which was quite different from the music itself. Similarly, a description of a smell gives a clear information to the readers being distinct and recognizable to all from their past experience, and in this case, one of spring and manicured lawns, etc. Therefore, the mark was held to be registerable.

 

In the case of IN RE CELIA CLARKE, DBA CLARKE’S OSEWEZ, the registration of ‘high impact, fresh, floral fragrance reminiscent of plumeria blossoms for sewing thread and embroidery yarn’ was initially refused on the ground that the mark does not distinguish the applicant’s goods. However, the Appeal Board of USPTO held that the applicant was the only source of scented yarn and thread and the scented fragrance serves the function of a trademark. As such, the fragrance is not an inherent attribute or natural characteristic of the goods, but rather a feature applied by the applicant.  Additionally, on account of advertising and promotion, the customers had come about to recognise the applicant as the source of the goods.

 

The following is a summary of the two main issues that arose in the four cases discussed above:

 

Table No. 1

 

ISSUE		Whether graphically represented?
S. No.	Case	Findings	Reasons
1.	RASPBERRY engine oil	YES	To qualify as a  trademark, an indirect representation will also suffice when the desired form of trademark cannot be directly represented in writing. For e.g., olfactory or sound.
2.	Fruity CINNAMON for services	NO	A formula is not sufficiently intelligible, and while a description of an odour is graphic, it is not sufficiently clear, precise and objective.
3.	Fresh cut GRASS	YES	There is a parallel drawn with sound marks, where the description of music suffices.  Even though musical annotation gives a “description” of the music rather the music itself, it is still recognised as an acceptable way of graphical representation.
4.	PLUMERIA BLOSSOM for yarn and thread	N/A	Not discussed.

 

 

Table No. 2

 

ISSUE		Whether the mark is distinctive?
S. No.	Case	Findings	Reasons
1.	RASPBERRY engine oil	NO	The consumer will only consider the smell as a ‘fragrance’ of the goods  rather than as a trademark. The smell is only decorative and does not indicate the good’s origin.
2.	Fruity CINNAMON for services	N/A	Not discussed.
3.	Fresh cut GRASS	YES	The smell is distinct as it is one which everyone immediately recognises from pleasant experience.
4.	PLUMERIA BLOSSOM for yarn and thread	YES	The applicant was the only person selling the product, and the scent was one that was applied and not one that exists  naturally. It is through marketing and advertising that consumers have come to recognize applicant as the source of the yarn.

 

 

Conclusion

 

Space restrictions did not permit an analysis under Indian Law, and particularly since there has been no case so far in India. It is expected that similar issues may arise as and when a first case comes up.