It is common to see a device, a label, or even a name signature having the suffix TM. But what about the sounds and smells of products? Can they be trademarked as well? This is where Non-Traditional Trademarks come into the discussion. These marks pertain to those trademarks which are outside the ambit of the conventional definition of a trademark and include, but are not limited to, sound marks, smell marks, motion marks, and even hologram marks. For instance, Yahoo's yodel, represented through musical notes is the first-ever non-conventional mark to be registered in India. Lamborghini's signature vertical opening doors is an example of a motion mark. However, it can be a tough row to hoe when it comes to trademarking certain smells.
A brief history of smell marks:
The first smell mark granted in the US was for a yarn thread produced by the company OSEWEZ. This was no ordinary thread for it contained the peculiar scent of plumeria blossoms. When considering the case, the TTAB had approved the trademark for the following reasons:
- Fragrance is not an inherent attribute of the goods in question i.e. yarn;
- This feature has been spotlighted in advertisements for the goods;
- It was demonstrated that customers, dealers and distributors of the yarn associate the applicant with the goods.
The Lanham Act, which created a national system of trademark registration, was enacted in 1946, post which the USPTO reasoned that because scents are not explicitly excluded from the statute, they are eligible for registration under Section 2(f) of the Act, provided they are non-functional and distinctive. Thus, the US trademark law makes it rather subjective and flexible when non-conventional trademarks are in question.
One of the most significant cases in ECJ for smell marks is Sieckmann v. Deutsches Patent-und Markenamt. Herein the applicant sought to register a trademark usually described as 'balsamically fruity with a slight hint of cinnamon. He presented the structural formula of the odour for this purpose but the Court rejected the same on the grounds of it not being graphical represented.
In October 2017, a regulation of the European Parliament came into effect which dealt with EU trademarks and stated that the requirement of graphic representation should be done away with to promote flexibility in the registration of trademarks. Thus the requirements within the EU, as of today, stand as "clear, precise, self-contained, easily accessible, intelligible, durable and objective". Thus, it follows the Sieckmann case for the most part but by removing graphical representation as a requirement, it has opened the doors for more possible applications.
To understand the requirements for a trademark to be registered in the UK, Article 2 of the 89/104/EEC Directive, Article 4 of the Community Trade Marks Registration EC/40/94, and Section 1(1) of the Trade Marks Act, 1994 must be considered. While the latter gave a very broad definition of trademarks, clarity was given through the White Paper, which recommended that it should "neither exclude nor make specific provisions for the registration as trademarks of colours, sounds, or smells".
If the requirements of the Trade Marks Act, 1994 are not fulfilled, the trademark will be rejected. However, there is another box that needs to be checked – the trademark must be distinctive. While it is difficult to prove the same, certain products have crossed this hurdle, for instance, Unicorn Products' darts with the smell of bitter beer.
However, changes were brought about in January 2019 to give effect to the Trade Marks Directive 2015, amending UK Trade Marks Act, 1994 and removing the requirement for a mark to be graphically represented, making it easier for sound marks to be registered.
Such amendments make it seem possible that changes will be brought about in the future to accommodate smell marks as well.
When discussing Intellectual Property, it would be amiss to not mention Singapore as well. The nation has gone through various amendments to make the field as innovation-supportive as possible. One prominent example is the Trade Marks (Amended) Act 2004 which incorporated objectives laid under the United States-Singapore Fee Trade Agreement. It removed the most prominent problem in registering smell marks and deleted the phrase "visually perceptible" from the definition of the trademark in the Act.
Indian Trademark Law, when read in the context of smell marks, leads to ambiguity galore. Section 2(1)(zb) of the Indian Trademarks Act, 1999 places the condition of 'graphical representation' for any product to be trademarked. Additionally, Trademark Rules, 2017 elaborate upon graphical representation of goods and services in paper form and have expanded the definition given under 2002 Rules to include digitized forms as well.
These conditions make it inherently difficult for smell marks to be registered, while not outrightly denying the possibility of the same. This is the source of ambiguity that disables innovators from getting their products' smell marks registered.
Suggestions and Conclusion:
It is indubitable that people associate products with their distinctive smell and thus trademarking it would encourage more innovation and advancement in the field of intellectual property.
It would be more commercially viable for the country as well, keeping in mind that there is a whole new category of products being created in today's time with newer technology which was not there before when the traditional definition of the trademark was made. Indeed, there have been amendments made to take into consideration non-conventional trademarks like sound, motion, and colours post-1959 but there is still a long way to go for India as the requirements for such non-conventional trademarks are very stringent and do not promote much innovation.
In this regard, it is pertinent to mention that in the case of sound and colour marks, India has made important amendments and, specifically for sound marks, the country follows the standard set in Shield Mark by the ECJ. Considering that India has made adjustments for sound marks and has followed certain European Union regulations regarding the same, it would be beneficial if the same was done for smell marks as well. However, even without the requirement of graphical depiction, smell marks face technological difficulties where registration is concerned.
Currently, it is difficult to clearly display the smell of the product. While sound marks can be accepted in MP3 formats, odours cannot be displayed in a similar form. Storing the substance in a bottle would lead it to dissipate in the future and chemical formulas do not represent the actual scent of the product.
However, the modern world is an innovator's playground and avante-garde creators are building novel technology to accommodate the novel needs of society. Thus, with scientific advancement and legal amendments to accommodate more non-conventional marks, the future of intellectual property can be very well secured, giving more incentive to developers and creating a healthy environment to promote advancement.
Author: Garima Chauhan is a third-year student at National Law University (Jodhpur), in case of any queries please contact/write back to us via email email@example.com or at Khurana & Khurana, Advocates and IP Attorney.
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