Flavor Of Origin: Can Taste Function As A Trademark?

Introduction

Trademark law has evolved over time, from visuals, logos, words, symbols that can easily be made visible to courts now acknowledging non-traditional marks such as sound, shape, colour etc. However, one of the most controversial versions of these marks are taste marks.Various attempts have been made to get these trademarks registered, but are met with apprehension, mainly because of a lack of distinctiveness, proving novelty and the impossibility of graphical representation. Moreover, taste marks are often seen as impossible to be trademarked rather than an unresolved legal issue.

However, this practice discredits the advances in commercial reliance on taste, smell, flavour as a proof of identification of an item. Similarly, it does not heed to the question of whether the law governing trademarks should permit exclusive rights over such marks.

Are Taste Marks Conventional or Unconventional?

Trademark law has been developed on the basis of what the consumers can see at the point of purchase. These include visual cues like words, logos, labels etc which help them identify the source of the goods and services. Even with development in the law, the means of identification remained the same. With time, many jurisdictions, including India began to grant recognition to unconventional trademarks. However, these marks must be distinct from others and must have the ability to be represented. They may be made visible in a different form, but share a common goal i.e helping consumers distinguish between one brand's goods from the other.

This pre-existing structure however has changed due to the prevalence of taste marks. Taste is a sense that can be experienced only after consuming it, and hence after purchase. Thus, it cannot influence the consumer's decision making in the same way traditional marks do. However, post-purchase recognition and association have long been recognized as important in evaluating a mark's distinguishing function; trademark law does not require source identification to take place only at the moment of sale. This shows that classifying taste marks as unconventional is for caution rather than due to any impossibility to trademark. A mark does not need to be visual, it is only necessary that one can differentiate between goods and services of one trader from that of others. Therefore, it can be said that taste is capable of being trademarked on closer inspection rather than an outright rejection.

Objection of Functionality

The major obstacle faced to get taste marks registered is the claim that taste is inherently functional. Functionality serves as a substantive hurdle to registration under trademark law, preventing merchants from monopolizing elements that are necessary for a product's use or purpose or that have an impact on its price or quality. Protection for trademarks is restricted only to those indicators which are capable of differentiating between goods rather than preserving their functionality.

Courts often use this justification to refuse registration of taste marks. In the landmark case of N.V. Organon¹, the United States Court of Appeals did not permit registration of a pharmaceutical product in an orange flavour due to the flavour serving the purpose of masking the actual taste of the medicine. This practice is carried out relying on a broad definition of functionality. Trademark law only excludes characteristics that are unrelated to reputation and whose exclusive appropriation would seriously damage competitors.

Functionality is not specifically defined under the Trade Marks Act of 1999, but this distinction is reflected in its framework. While Section 9(1) prohibits registration solely in cases where a mark lacks distinctiveness or comprises descriptive indications, Section 2(zb) mandates that a mark be able to differentiate goods. Thus, functionality only plays a role when it downplays individuality or becomes essential for description. A closer look proves that that flavour is not the main purpose of most items. Taste only improves the consumer experience; food's primary function is to supply nutrients and sustenance. Flavour is not necessarily of utmost importance as many items serve their purpose without having a particular taste.

Flavour is not technically necessary because many items, such emergency rations or supplements, serve their purpose while having little to no taste.

Instead of looking at practicality, taste is being viewed as an aesthetic or sensory feature. This is similar to colour or packing which could boost its appeal in the markets without the function of a product being necessary. For example, two beverages with the same composition might merely differ in flavour, but customers might identify a certain taste with a particular manufacturer. In many situations, flavour serves as a commercial origin indicator rather than a technical prerequisite. Moreover, taste differs depending on the way it is prepared, the ingredients used etc, thereby undermining the argument that taste is inherently functional. Perceiving taste as functional without prior examination destroys the distinction between usefulness and identification. A more thorough, balanced approach needs to be opted for to assess case to case whether a particular taste is essential to a product's function or if it simply enhances its appeal.

Distinctiveness and Source Identification

Another significant hurdle faced is the distinctiveness in recognition of taste marks. Protection under the law only extends to those that can distinguish goods of one from another. What is to be looked at is, whether the consumers perceive the sign as a point of origin of the business or as a description of the product's feature. Distinctiveness can be from within or practiced and learnt over time and use.

Since taste is subjective and only experienced during consumption, it is often believed to lack this ability. Non-visual marks that come to notice through sight are recognised by the law as it is a sensory signal that has the ability to set a solid connection between the product itself and its origin. In reality, flavour when used often and exclusively can become novel. Especially when it is relating to drinks, syrups, chocolates etc wherein the customers often relate a certain taste to a certain manufacturer's goods. Certain products on the basis of taste can be identified even without the brand labels presence.

Examining the relations between perception of taste and its memory, research shows that people can remember flavours connecting them to past experiences. This is why taste serves as a marker of origin rather than simply a sensory characteristic. Such connections are reinforced further because of the shared habits of consumers. Considering that, it is incorrect to make an assumption that taste cannot be distinct. The fundamental condition of trademark uniqueness is satisfied when a particular taste has grown to represent a single commercial source in the perceptions of consumers. Therefore, the examination should focus on the existence of distinctiveness in a particular case.

Comparative Position in the United States and the European Union

Both the United States and the European Union tread carefully when dealing with taste marks, despite there being no law which clearly prohibits them. The challenge is in meeting the legal requirements such as non-functionality, representability and distinctiveness.

Previously, the law in the EU mandated that a mark had to be graphically representable under Article 2 of the Directive 89/104/EEC. This requirement was not met by taste marks as they could not be represented with the use of images or words. However, this requirement was withdrawn when Regulation (EU) 2017/1001was introduced. A mark must still be able to be depicted in a way that enables authorities and the general public to ascertain the specific and unambiguous subject matter of protection, according to Article 4 of the EUTMR.

In practice, taste marks continue to fail this threshold. The EUIPO does not permit the filing of taste samples, and taste is not included among the non-exhaustive list of acceptable mark types under Article 3(3) EUTMIR. As a result, applications for taste marks are likely to be refused under Article 7(1)(a) EUTMR for lack of proper representation.

In the United States, the Lanham Act does not expressly bar taste marks, and in theory permits their registration if they are non-functional and have acquired distinctiveness. However, judicial practice has adopted a restrictive approach. In In re Pohl-Boskamp GmbH & Co.,² the Trademark Trial and Appeal Board declared that the peppermint flavour used in pharmaceutical products was perceived only as a feature of the product. Similarly, in New York Pizzeria v. Ravinder Syal,³ it was held that flavour cannot be treated as a trademark, while rejecting an application for trademarking the taste of pizza. Such cases highlight the consistent opinion of the courts that taste is viewed as a product rather than a source of origin.

Both these positions highlight that it is the practical constraints and lack of research that leads to the rejection of taste marks rather than an inherent impossibility. Their frameworks present a possibility of its registration and protection where taste is capable of being a source-identifier.

Conclusion: Rethinking the Place of Taste in Trademark Law

The consistent hostility to registering taste marks highlights a deeper limitation within the law rather than an actual impossibility of protecting the mark. Traditionally, the conventional trademarks have been prioritised, however modern branding relies on other possibilities as well. Taste, despite being experienced post- purchase is still an identifier of the source through which a consumer associates the product.The present legal frameworks treat taste marks with vigilance due to the ambiguity around functionality, representability and distinctiveness. However, these are not to be seen as absolute obstacles because, with a closer look they are just contextual limitations.

To successfully assess taste marks, a more balanced approach is required. The focus has to be on whether a taste mark has the ability to identify the source of a product, without putting the competitors at a disadvantage. Acknowledging their potential would bring trademark protection into line with changing business realities and the more general goal of consumer identification, even in restricted situations.

Footnotes

1 In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).

2 In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d 1042 (T.T.A.B. 2013).

3 New York Pizzeria, Inc. v. Ravinder Syal, No. 2:08-cv-01500, 2009 WL 10678368 (D. Nev. Apr. 15, 2009).

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