Smell means to perceive the odour or scent of something through stimuli affecting the olfactory nerves. Smell is said to be one of the most potent types of human memory and it has the ability to conjure up images and initiate memories in a person's mind. Businesses show increasing interest in pairing pleasant scents with their products and under certain circumstances a scent may cause a consumer to associate a particular product with a single commercial source.
As such, scents are capable of functioning as source identifiers which is one of the essential requisite of trademarks. Smell marks are non-conventional trademarks, which means smell marks are those which does not belong to a pre-existing, conventional category of trade marks. This category is often difficult to register as a trademark, but which may nevertheless fulfil the essential trademark function of uniquely identifying the commercial origin of products or services.
Smell marks also known as scent trademarks or olfactory trademarks sometimes find its specific mention in legislative definitions of "trademark", however, it is often difficult to register such marks if consistent, non-arbitrary and meaningful graphic representations of the marks cannot be produced. To obtain registration of a smell mark. applicants must be able to visually represent the product's scent and must show it to be distinctive from the product itself. For instance, a bottled sample of the smell would decay over time and therefore cannot be kept on a trademark register. Writing down the chemical formula for a smell is problematic, as it is deemed to represent the substance rather than the smell of that substance. Any written description of a smell must be so precise, so that the particular smell is not confused with any other. Another obstacle to smell mark registration is that the smell must not result from the nature of the good itself. Hence, the major difficulty lies in capturing the point at which a scent functions as a trademark.
THE US VIEW:
The first U.S. scent mark registration was issued in 1990 (In re Celia, d/b/a Clarke's Osewez, 17 USPQ2d 1238 (TTAB 1990)). The registration was for a "high impact, fresh, floral fragrance reminiscent of Plumeria blossoms" used in connection with "sewing thread and embroidery yarn." In the said case the appellate board observed that
"(1) the applicant was the only person marketing threads and yarns with a scent, (2) the scent was a feature added by the applicant and not inherent or natural to the goods, (3) the applicant advertised and promoted the scented feature and (4) the applicant demonstrated that purchasers had come to recognize the applicant as the source of the scented goods.
Since that decision there has not been much development in the area of smell mark registration. Since the Clarke decision, only one scent mark has been registered on the Principal Register, for a cherry scent for "synthetic lubricants for high performance racing and recreational vehicles". Eleven scent marks are registered on the Supplemental Register of the USPTO, which is a secondary register, generally reserved for marks that are capable of distinguishing an applicant's goods or services, but that have not yet acquired the requisite distinctiveness.
The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial in the US. In order to overcome this requirement of substantial evidence, the applicant has to establish two primary things:
- Proving non-functionality:- A feature is functional if it is essential to the use or purpose of the goods, or, if it affects the cost or quality of the product. If a product feature is functional, it cannot be protected as a trademark, even with proof of secondary meaning. The functionality doctrine seeks to prevent trademark law from inhibiting competition, by allowing a trademark owner to control a useful product feature. Therefore, if an applicant can show that the scent acts as a source identifier without performing any other significant function, the scent is likely pass the non-functionality test.
- Proving distinctiveness:- A nonfunctional scent mark may be registered on the Principal Register, but only with proof of acquired distinctiveness. As mentioned above, the amount of evidence needed to establish acquired distinctiveness of a scent mark is substantial. If an applicant is unable to demonstrate that a scent has acquired distinctiveness, the scent can be registered only on the Supplemental Register. After a scent mark has existed for five or more years on the Supplemental Register and additional evidence of acquired distinctiveness has been obtained, the registrant may file a new application for registration of its mark on the Principal Register.
THE EU VIEW
A trademark can be protected throughout the EU by registering the mark as a Community trade mark (CTM) with the Office for Harmonization in the Internal Market (OHIM). Article 2 of the European Trademarks Directive and Article 4 of the Community Trade Mark Regulation allow for the registration of signs, not limited to words and graphics, as long as they can be "represented graphically" and are "capable of distinguishing the goods or services of one undertaking from those of other undertakings."
The main impediment that scents need to cross is graphical representation. This issue was addressed by the European Court of Justice in Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00,  ECR I-11737 (ECJ Dec. 12, 2002)). It was observed 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. The ECJ rejected this application on the ground that it did not meet the criteria for graphical representation. Another requirement is that the distinctiveness of a scent mark, as with any trademark, must not resulting from the nature of the goods themselves. In the United Kingdom, the application to register the scent of Chanel No. 5 perfume was rejected in 1994, as it was the essence of the product.
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. The latter one was rejected later on the ground that the mark was not distinctive in relation to the goods. The EU has been heavily influenced by the Sieckmann graphical representation standards. In practice, this landmark decision has almost closed the doors for scent marks in the EU. In fact, there appears to be no Community scent marks on the register today, as the mark "the smell of fresh cut grass" lapsed in December 2006 as a result of non-renewal.
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 a sine qua non for TM Registration in India. Another important criterion to be satisfied is distinctiveness. The proviso to section 9 (1) of the Trade Marks Act, 1999, recognizing this 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 of it".
Though graphical representation and secondary meaning associated with non-traditional trademarks are sine qua non, the principle of representation imposes a greater hurdle for the registration of smell marks. In the event that a practical and cost effective solution is devised, eliminating the impediment to graphical representation, olfactory marks shall be registrable, obviously along with distinctiveness. The Indian system has definitely gathered a lot from the experiences of the European Union and the United States, and while its decision to not grant trademark-ability status to olfactory marks is based on practical impediments that exist today, the same may be subject to change, considering the growing commercial and advertising trends that exist, coupled with technological advancement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.