Smell is a potent wizard that transports you across thousands of miles and all
the years you have lived
The main function of a Trademark is distinguished in three simple reason, i.e.
to distinguish own goods from others, to know the origin of that goods or to
signify the quality of that good.
Trademarks are the essence of the competition, the competition in the society
for the goodwill and distinguishing characteristics. They make possible a choice
between competition articles by enabling the buyer to distinguish one from the
other. To protect trademark is to protect the public from deceit and to foster
From the past times, Trademark is considered as an intangible asset, but the
intangibility in Trademark is seen as a topic of discussion when topics like
Smell and taste is taken into consideration.
The ever-increasing competition in the business world compels corporations and
businesses to be distinct; to stand out in order to garner a larger consumer
base. Apart from huge investments in advertising and attractive offers, the
prime mode that they adopt is by way of trademarks.
A trademark is a sign of quality; it is an assurance that the product in
question has emerged from a particular source. The more unique and popular the
trademark, the more likely it is to attract consumers.
Now, in general parlance, a trademark is defined as a word, phrase, symbol
and/or design that identifies and distinguishes the source of the goods of one
party from those of others. However, it does not stop here.
Now in the modern time the topic of registering the SMELL of something is also
seen, and moreover the Trademark of registering the perfect aroma of a
particular thing is said to be an actual mark which constitutes all the
functions of the Trademark and can eventually be registered. Thus, new
precedents and challenges are seen for the acceptance and future growth of the
In India the need for registration of Smell, Sound and Taste are gradually
increasing as the business needs to have a goodwill in all remains.
If you heard a familiar, comforting sound associated with a particular kind of
tea, would you be more likely to choose it? How about the smell of freshly cut
grass emanating from tennis balls � would they make you a winner? Or
mint-flavored tennis balls for your dog � would fresher breath not be welcome?
Marketing specialists would like us to think so, and these are only some of the
subtle ways manufacturers get us to recognize their products. But just how far
can trademark registration be stretched to protect these innovative ideas?
Smell is said to be one of the most potent types of human memory, and businesses
show increasing interest in pairing pleasant scents with their products. To
obtain registration of a smell mark applicants must be able to visually
represent the product's scent and must show it is distinctive from the product
itself. A bottled sample of the smell for example would decay over time and
could therefore not be kept on a trademark register. But how does one represent
a smell in a visual way? 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 that that
particular smell would not be confused with any other. Hence, the registration
of a Smell Trade Mark is said to be a very hectic, time consuming and a
non-assured part of trademark registration.
Despite the repeated use of these non-conventional marks in the global market,
it lacks a universal validation owing to the existence of territory wise
registration. But at the same time one of the most imperative changes has been
introduced by these modern trademark forms in the present trademark law along
with the constant struggle for the law makers to guarantee a balance between
development intellectual property laws and technological improvements and that
they are at par with one another. Trademark can be classified into two
categories: conventional or traditional and non-conventional or modern
trademarks. Trademark is, commonly, associated to words, names, symbols or some
other sign utilized for recognizable proof of merchandise and services provided
by one maker.
small tour through trademark
Before diving in the Aroma, we should take a look at the provisions which tells
us what is a Mark and what is a Trade Mark, and does the unusual Trade Mark
of SMELL count in it or not.
The list of various kinds of marks included in the definition of a
'mark', although comprehensive enough to compromise any kind of symbol, is not
exhaustive. This follows from the use of the expression mark includes in the
definition of marks included under S.2(1) (m), which expresses as (mark
includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colors or any combination
thereof). Thus, the word 'mark' is a word in ordinary use; it is not a word of
art and its construction is not limited by words which follows it in the
statutory definition. It has many meanings according to the context in which it
As said that mark must be used visually and not orally. Subject to
this, it may be used in any kind of relation whatsoever to the goods, not
necessarily a physical relation. A mark must be something distinct from the
thing marked. A thing cannot be marked of itself .
If we see the broad definition of mark which is linked with the trade
name, A trade name is a term which includes individual names and surnames, firm
names and trade names used by manufacturers, industrialists, merchants,
agriculturalist, and others to identify their business, vocation, or
occupations, the names or titles lawfully adopted and used by persons, firm,
associations, companions, unions and any manufacturing, industrial, commercial,
agricultural, or other organizations engaged in trade or commerce and capable of
suing and being sued in court of law.
Bringing lights on the basic principles of trademark, provides three
main functions of a trademark i.e. what types of marks should be included in
trademark and should be eventually registered. It states: (1) Distinctiveness or
distinctive character, or capable of distinguishing; (2) Deceptively similarity
or similarity or near resemblance of marks and (3) Same description or
similarity of goods. This the basic features of Trademarks and hence the scope
of trademark is very large.
A Concept Of Non- Conventional (Traditional) Trademarks
In the modern era and with the advancement in the region of trademark, a wide
region of trademarks has been seen nowadays which is secured under the heading
'non-traditional trademarks', cases being smell, sound, and taste and so on.
The term Non-Traditional trademarks pertains to those trademarks which do not
fall under the ambit of the conventional definition of a trademark. These marks
are not confined to words, symbols, name, device, packaging or combination of
colors but extend to three dimensional marks, sound marks, motion marks,
position marks, hologram marks, slogans, feel marks, smell marks and taste
marks. Due to the dynamics with regards to the term 'trademark' many of such
non-traditional marks has become widely accepted which has been reflected in
many inclusive legislations and international treaties such as Agreement on
Trade Related Aspects of Intellectual Property Rights. However, graphical
representation of such nontraditional marks is an issue to be resolved.
Traditionally, trademarks are limited to words, logos or symbols that can be
represented graphically in relation to any goods or services. The definition of
a trademark under the Trade Marks Act, 1999 as per Section 2(zb) is trade mark
means 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. However,
with the passage of time, not only logos, symbols or taglines are being
associated to goods and services but also sound, taste, smell, texture,
hologram, motion, shape and the ambience of the goods or services. Thus, when a
mark goes beyond the realms of the traditional conventional category of being
judged solely by the eye it is known as Non-Conventional Mark.
The Indian legislation has no specific provisions for Non-Conventional Marks
except for the mention of sound marks. Under Rule 26(5) of the Trade Marks
Rules, 2017 when the application has been made for a Sound Trade mark, it shall
be reproduced in MP3 Format not exceeding a length of 30 seconds, recorded on a
medium that allows for easy and clearly audible replaying quality along with a
graphical representation of its notation. However, it is interesting to note
that TRIPS too do not have provisions for Non-Conventional Marks. Article 15 of
TRIPS states that Such signs, in particular words including personal names,
letters, numerals, figurative elements and combinations of colours as well as
any combination of such signs, shall be eligible for registration as
trademarks. Thus, from Article 15 it is clear that only those signs which are
capable of representation are considered as trade marks
Types Of Non-Conventional Marks:
What is smell / and how is it even related to registration
- Sound Marks
Sounds have a big impact on how consumers perceive a brand. With the growth of
e-media, sounds play a big role in identifying a product or service thus adding
value to the brand. A sound mark is a mark where the sound is used to perform
the function of uniquely identifying the commercial origin of products and
services. Sound marks function as source indicators when they assume a
definitive shape and arrangement and create in the minds of the listener an
association of the sound with a good or service. Yahoo's Yodel is the first
sound trademark to be registered in India. Some of the famous sound marks
registered in USA are the sound of the famous Tarzan yell, the lion roar of
Metro-Goldwyn-Mayer Corporation, the music consisting of drums, trumpets and
strings in the Twentieth Century Fox Films, the sound of the crowd and the bell
of New York Stock Exchange, McDonald's Corporation's five-note I'm lovin' it
- Smell Marks
When the source identifier of goods is a smell, then it is termed as Smell Mark.
Smell Marks are a lot tougher than sound marks to be registered because they
lack any form of representation.
- Hologram Mark
Holography is a photographic technique that records the light scattered from an
object, and then presents it in a way that appears three-dimensional. A hologram
is a cross between what happens when you take a photograph and what happens when
you look at something for real. Like a photograph, a hologram is a permanent
record of the light reflected off an object. But a hologram also looks real and
three-dimensional and moves as you look around it, just like a real object. That
happens because of the unique way in which holograms are made.
- Motion Mark
A motion mark is moving animated object or logo which is used by a company as a
marketing strategy to gain a customer base. A motion mark is made by using
computer programs and software along with animation techniques.
- Taste Marks
Taste marks are easier to be represented graphically as the written description
of the taste can be used to indicate the taste of the goods. However once again,
the challenge lies in functionality. A trademark for the taste of pizza or pasta
cannot be granted as it inherently performs the function of making the same-
i.e. adding flavor to the dishes. Thus, we see thousands of chefs making dishes
with the same ingredients and with no or hardly any changes. Any product meant
for human consumption may inherently disqualify for taste protection under
trademark given the functionality doctrine. Two notable applications for
registration of taste mark came before the European Union Intellectual Property
Office (EUIPO) and the United States Patent And Trademark Office (USPTO) but
both of them ended up being rejected. Till date, no application for having a
taste mark registered have come before the registry.
- Trade Dress
Trade dress is the overall look and appearance of a product or packaging that
signifies the source of the product to the buyer. One of the classic examples of
trade dress is the visual appeal of a Coca Cola bottle. The shape of the bottle,
the red label along with the red cap all comprise of trade dress. In short,
trade dress is the overall look and feel of the product.
What's in a smell? Smell is one of the five senses. Human mind reacts
differently to smells. Smell is abstract and is often linked to abstract events
such as smell of success or smelling a rat. 'Would a rose by any other name
really smell as sweet?'
- Shakespeare's Romeo & Juliet (2:2)
Intellectual property laws aim at dealing with technological innovations and to
try and protect as much as possible the creation and the economic interests that
are usually raised with such inventions. Accordingly, intellectual property laws
offer three principle protections � patents for inventions, trademarks for signs
that are capable of being represented graphically, and copyrights � for
protection of literary, artistic and scientific works.
This is in sharp differentiation to the next four senses as they all
invigorate region of the cerebrum, and require a conscious assessment to
deliver a response. Thus, the feeling of smell has an extremely special and
private control over what one does and how one lives. The term 'olfactory'
origin from medical science. Roof of each nostril is termed as nasal mucosa, a
region that contains sensory epithelium called olfactory epithelium. The
epithelium houses epithelial cell in form of pigment that absorbs radiations
such as infrared and receptor cells that possess a knob above epithelial
surface, from which extend 8-20 olfactory cilia. These cilia contain smell
receptors. It can likewise be comprehended from the way that emotions, either
constructive or contrary, about individuals, places and things, may well be
dictated by how they smell, and this seems, by all accounts, to be so regardless
of whether there is awareness of their odour
Smell marks have evolved as a result of manufacturers giving smells or scents to
their products in order to make them distinct from other similar products.
Olfactory sense is one of the most potent sense which is capable of registering
itself in the human memory. However, as mentioned earlier, the registration of a
smell mark has been enabled subject to the fulfilling of the condition that the
smell is graphically represented. This condition is the vortex of the problem
with regards to its registration. If such a smell is to be described then its
description has to be so precise and accurate that it cannot be confused with
any other smell. Also, the smell to be registered must not be arising out of the
nature of the product itself.
It is undeniable that today's market economy is in the hands of the consumers
hence manufacturers prefer to be associated with the consumers more closely than
ever and to do so they prefer the nonconventional marks. In order to understand
the international development in the trademark regime regarding smell as marks,
the author has examined the locus of smell mark as a trademark in different
- United States of America:
In the USA, the trademark is governed by the Lanham Act which protects those
trademarks and the rights of its holders. The Lanham Act, which was enacted in
1946 and embodies federal trademark law, recognizes that traditional marks � any
word, name, symbol, or device, or any combination thereof that could indicate
the origins of a product or service � are eligible for protection if used in
commerce. The statue did not expressly state whether a trademark can take the
form of colors, smells, and sounds. Section 45 of the Lanham Act, 1946 defines
trademark as, The term trademark includes any word, name, symbol, or device or
any combination thereof:
- used by a person, or
- which a person has a bona fide intention to use in commerce and applies
to register on the principal established by this Act, to identify and
distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even
if that source is unknown.
The said definition does not denote any kind of information to scent marks,
smell marks or olfactory marks, but future the mentioning of trade dress was
included in the case of Two Pesos, Inc. v Taco Cabana which confronted the trade
dress to include size, shape, color or color combinations, texture, graphics, or
even particular sales techniques within itself. Further in Harward law review it
was held in the article to define trade dress as Here, it is pertinent to
mention that 'trade dress' includes Sensory marks such as smell or color.
Hence, the area of acceptance of Smell trademark was eventually increased
significantly in US.
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.
And finally, a break through case was intercepted, in In re Clarke case where
a newly manufactured sewing and embroidery yarn was rejected trademark
registration citing the non-distinctiveness of the product from other similar
products as the reason. This was argued against by the Petitioner contending
that his product was the only scented embroidery yarn being manufactured in the
market giving it high impact, floral smell like that of Plumeria Blosssoms.
However, this contention of the Petitioner was rejected on the grounds that he
failed to associate the scent to the origin of the product and that the scent
was not specified on its packaging. Aggrieved, the Petitioner preferred an
appeal to the Trademark Trial Appeal Board (TTAB), wherein TTAB opined that a
scent is very well capable of distinguishing a product from others. TTAB held
that the Petitioners' product was the only yarn in market with a scent and
advertised on the similar lines and that it has been associated to the origin of
the products. Consequently, TTAB gave the yarn a trademark registration
reasoning that a unique scent is a prima facie case for distinctiveness of its
The judgement given by TTAB in In re Clarke was acknowledged by the US Supreme
Court in Qualitex Co. v Jacobson Prods
. Co .wherein the court observed that:
Scent marks can be affixed directly to or infused into the product, like the Plumeria Blossom-scented yarn or hypothetical raspberry scented upholstered
furniture, or could even be affixed as a scratch-and-sniff or scented
card. Therefore, it could be said that smell marks are qualified to
registered as a trademark in the USA and is permissible owing to the coupled
effect of the judicial decisions and the statutory provisions.
Though the United States Patent and Trademark Office lets you trademark a scent,
few have taken them up on the offer. Millions of conventional trademarks (logos,
slogans, etc.) have been registered, but the government's filings on their
olfactory counterparts could barely fill a three-ring binder.
The U.S. Patent and Trademark Office uncovered only 10 active registered scent
trademarks which are as follows:
2. United Kingdom:
||Flowery Musk Scent (Verizon Stores)
||Bubble Gum Scent For Sandals
||Pi�a Colada Scent To Coat Ukuleles
||The Coconut Smell That Fills Flip Flop
||Rose-Scented Marketing Products
||Minty Pain-Relief Patches.
||Strawberry, Cherry, And Grape Lubricants For
||2568512, 2596156, 2463044
The UK trade mark regime is predominantly governed by the Trade Marks Act 1994,
and is largely harmonized the EU trade mark law. Section 1 of this Act defines a
trade mark as:
any sign capable of being represented graphically which is capable of
distinguishing goods or services of one undertaking from those of other
United Kingdom trade mark law provides protection for the use of trade marks in
the UK. A trade mark is a way for one party to distinguish themselves from
another. In the business world, a trade mark provides a product or organisation
with an identity which cannot be imitated by its competitors.
Trade Marks in United Kingdom are governed by the United Kingdom Trademarks Act,
1994. The day the UK TMA came into existence, Chanel tried to register smell
mark as a trademark for its product 'Chanel No 5' and attempted to represent the
smell mark graphically by describing their perfume as, 'The scent of aldehydic-floral
fragrance product with an aldehydic top note from aldehydes, bergamot, lemon and
meroli; an elegant floral middle note, from jasmine, rose, lily of the valley,
orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla,
amber, civet and musk.
The scent also being known by the written brand name
No.5.' This application as unsuccessful as perfume was not only the smell
mark but the end product in its finality and could not be considered as an
indicative of the origin of the product. Therefore, it was denied on the grounds
as it was unsuccessful on account of lack of indication of its origin.
Similarly, in Myles Limited's case
, the registrability of 'the scent of
raspberries' with respect to fuels, including motor fuels, particularly diesel
as heating fuel, fuel and engine fuel was in question. The scent was denied
registration on the ground that even though it could be represented graphically,
it lacked distinctiveness as an attribute.
Again, in Sieckmann v Deutsches Patent-und Markenamt
 case, 'the smell of
balsamically fruity with a slight hint of cinnamon' was not considered as registrable as it was found to be unobvious to the average consumer. This case
did not consider and ruled out written descriptions, chemical formulas, samples,
electronic sensory analysis and graphic profiles as a means of identification of
the smell. Thus, this case onwards, the registrability of smell marks as
trademarks have come to a halt given its precedential value.
But the things took turn and followed by the successful registration of a floral
fragrance similar to roses as applied to tyres by Sumitomo Rubber Co and smell
of beer applied to flights for darts by Unicorn Products. As on the same day,
two more application were made to register scent as a trademark whereby Sumitomo
Rubber Co. pitched scent of 'floral fragrance reminiscent of roses as applied to tyres' and Unicorn Products pitched the scent of
'the strong smell of bitter
beer applied to flights for darts' as a trade mark for their end products and
both of them were granted registrations.
Later, In John Lewis's case
, scent mark of 'the smell, aroma or essence of
cinnamon' was sought to be registered as a trademark in relation to furniture
products. It was denied registration by the Principal Hearing Officer as he
reasoned that an individual's perception of would vary depending on the
circumstances, that the scent could not stand just by itself as it lacked
definition and that it was not precise enough so as to eliminate any sorts of
confusion which might arise due other similar smells.
Even in the case of the UK the problem was with the graphical representation of
the marks similar to the case of ECJ. Graphical representation is not only
necessary for recording and publishing the mark but also to allow the concerned
parties to determine extent of existing trademark rights by running a search of
The Principal Hearing Officer in a case of registration of
the smell or aroma of cinnamon in respect of furniture highlighted the
difficulty in registration of smell marks by stating that a man's view of the
scent is probably going to be affected by the conditions in which they have been
valued. Apart from graphical representation, it is important that the mark is
not lacking of unique character as was stated by the OHIM Third Board of Appeal
in another such case. Since an olfactory mark is incapable of being perceived
visually, it raised a question as to whether an olfactory mark cannot be a
subject matter of trademark in any capacity.
The answer to this question was dealt with for the first the first time in the
case of Sieckmann v Deustsches Patent-und Markenamt
 before the European
Court Of Justice. The ECJ emphasized on the graphical representation of the mark
rather than on visual perception. But at the same time the ECJ decided that
graphical representation per se is not enough for registration, and it must
fulfill the following criteria: It must be complete, clear and precise, so that
object of the right of exclusivity is immediately clear. It must be intelligible
to those persons having an interest in inspecting the register, i.e. other
manufacturers and consumers.
Therefore although in UK the registrations of olfactory marks is very much
allowed and open in theory but the reality of practice is quite the opposite
especially in regard to the Sieckmann as descriptions in writing, chemical
formulas, samples, electronic sensory analysis have been struck down by the
The European Community Mark (ECM) is alternative and compliment to trade-mark
registration in individual European Union countries. Similar to Lanham Act, a
wide definition of trademarks has been acknowledged by the EU directive and is
unable to address scent marks clearly. The ECM provides protection for a
trade-mark meeting the ECM registration requirements for the entire market
within the European Union.
The objective of the ECM is to allow applicants to
file one trade-mark application for the entire European Union, removing the need
for applicants to register trade-marks separately in each European Union member
state. According to the regulation governing ECMs, an ECM may consist of any
signs capable of graphical representation that are capable of distinguishing the
goods or services of one business from those of another. Signs which do not
conform to these requirements cannot be registered.
Previously, the graphic representation requirement for European Community scent
marks was satisfied by a written description of the scent employed in the mark.
This changed with the recent European Court of Justice (ECJ) decision in
Sieckmann v. Deutsches Patent-und Markenamt
In Sieckmann, the Applicant sought
registration of the compound methyl cinnamate as a scent mark in association
with classes 35, 41 and 42 of the Nice Agreement on the International
Classification of Goods and Services for the Purposes of the Registration of
Marks. The Applicant described the mark in his application as the pure chemical
substance methyl cinnamate (= cinnamic acid methyl ester). The trade-mark
application also included the chemical structure of methyl cinnamate, a
description of methyl cinnamate's scent, and a scent sample.
In 1999, the Community Trade Mark Office (CTM) contemplated whether the scent
of fresh cut grass could be registered as a trademark for tennis balls.
Initially, the application was refused on the ground that the words the smell
of fresh cut grass did not qualify as an adequate graphical representation of
the mark capable of depiction in a shape or form as required by Article 4 of the
Community Trade Mark Regulation. On appeal, the Board of Appeal decided that the
scent of fresh cut grass is a distinct scent known to, and recognizable by, the
majority of the population from experience, and thus that the mark's description
was appropriate for registration.
The refusal of the registration of a balsamically fruity smell with slight hint
of cinnamon by the European trademark registries raised two questions to the ECJ:
- First of all, a mark which cannot be reproduced visibly can still be
reproduced with certain aids
- And secondly whether the requirement for graphic representation in
Article 2 is met when an odour is reproduced by (a) chemical formula, (b) a description,
(c) a sample or (d) a combination of these elements.
The ECJ interpreted Article 2 of the CTMR as denoting that a ECM may consist of
a sign which is not in itself capable of being perceived visually, provided that
the sign can be represented graphically by images, lines or characters and that
the representation of the sign is clear, precise, self-contained, easily
accessible and durable.
The Court ruled that requirements of graphic
representation for scent marks are not satisfied by one, or any combination of
the following: the scent's chemical formula, a description of the scent in
written words, or deposit of a scent sample.
Some of the trade mark register offices in Europe, e.g. the UK Register Office,
the Uniform Benelux Register Office, the German Patent- und Markenamt or the
OHIM had to deal with applications on olfactory trade marks in the recent past.
Only a few of those applications have been successful so far.
As already mentioned above, it started out with three applications of smell
trademarks to the UK Register Office on 31st October 1994, the day of the
enforcement of the Trade Marks Act.
If we see conventions regarding Smell Marks in Europe:
The first remarkable case that day was the well-known perfume manufacturer
o register the fragrance of 'Chanel No 5' as an olfactory
trade mark in 1994. The Chanel application failed because of the above said
second requirement that the shape of the product shall not result from the
nature of the good itself. However, the smell of a perfume is the good itself
and can therefore never be successfully registered as an olfactory trade mark.
This is the current state of the laws.
- Sumitomo Rubber Co.
The second application was lodged by Sumitomo Rubber Co., which applied to
register a floral fragrance/smell reminiscent of roses as applied to tyres.
This request was successful and became known as the first UK's olfactory trade
mark with the no. GB 2001416.
- Unicorn Products
Another success that day was registered by Unicorn Products, which sought to
register a mark in class 28 in respect of 'the strong smell of bitter beer
applied to flights for darts'. This olfactory trade mark was recorded by the UK
Register Office under no. GB 2000234.
The case of Vennootschap onder Firma Senta Aromatic Marketing led to a much more
controversial debate concerning the registration of smell trade marks. The firm
applied to register the smell of fresh cut grass for tennis balls and it was
initially rejected by the examiner on the basis that this description was not a
graphical representation in means of Art. 4 CTMR of the olfactory mark.
- John Lewis of Hungerford plc.
A more recent case is that from 2000 of John Lewis of Hungerford plc., in which
the firm applied to register a mark in class 20 for furniture and parts and
fittings therefore which consisted of 'the smell, aroma or essence of cinnamon'.
This judgment shows that in the recent past the courts have been more reluctant
to register a smell trade mark that is only being represented in words.
To conclude, only a few olfactory trademarks have been registered since the new
provisions that were implemented according to the Directive 89/104 EEC came into
force. Apart from the 'perfume' cases that cannot be registered because of the
requirement that the smell shall not result from the nature of the good itself,
the graphical representation of the smell still provides the most difficulties.
Scent marks are explicitly registrable under sections 7 and 17 of the Australian
Trade Mark Act of 1995. Section 17 defines a trade mark
as a sign used, or
intended to be used, to distinguish goods or services dealt with or provided in
the course of trade by a person from goods or services so dealt with or provided
by any other person, while section 6 defines a sign as including scent. A
search of the Australian trade-mark register at the time of writing indicates
that there is one scent mark application currently being examined, while five
scent mark applications have lapsed and therefore remain unregistered.
It is possible that representing a scent mark by the scent's chemical formula in
Australia may constitute deception under section 43 of Australia's Trade Marks
Act 1995, as the chemical formula of a scent does not represent the odour of the
compound used in the scent mark, but the compound itself.
The amended Trademark Act of New Zealand made a noteworthy change in the
statutory provision in regards to the definitions of the term trademark wherein
the word sign includes a brand, color, device, heading, label, letter, name,
numeral along with smell, sound, taste etc. Through this article it has been
established that protection of smell marks in New Zealand is granted through
both statutory provisions and judicial decisions.
Thus, an application for scent mark registration describing the scent mark in
terms of chemical formula can be potentially rejected on the basis of the mark
description. Given this potential for rejection, in the absence of a ruling by
the Australian trade-mark authority, it is advisable to represent a scent mark
in words, not chemical structures. Such a representation could include the
chemical name of the scent, or description of the scent mark's fragrance.
5. Nations who don't want to smell the trademarked Scents:
The only marks that can be registered in Brazil are visually perceptible signs.
Therefore, scent marks cannot be registered under Brazilian trade mark law.
Article 8 of Chinese trademark statute restricts registered trademarks to
visible symbols. Therefore, scent marks are not registrable in China.
Article 88 of the Mexican Industrial Property Law states that only visible signs
may be registered as trademarks. Therefore, scent marks do not qualify for
trademark registration in Mexico.
In India the trademark has some essentials, Essentials requirements of a trade
mark The definition given in the Act is very wide. Briefly stated, a trade mark
is a visual symbol used in relation to any goods or services to indicate some
kind of trade connection between the goods or services and the person using the
In order to bring it within the scope of the statutory definition, a trademark
should satisfy the following essential requirements:
- It must be a mark, that is, a device, brand, heading, label, ticket,
name or an abbreviation of a name, signature, word, letter or numeral shape
of goods, packaging or combination of colours or any combination thereof;
- It must be capable of being represented graphically; It must be capable
of distinguishing the goods or services of one person from those of others;
- It must be used or proposed to be used in relation to goods or services;
- The use must be of a printed or other visual representation of the mark;
- Such use in relation to goods must be upon, or in any physical or in any
other relation whatsoever to the goods; and
In relation to services must be use of the mark as or as part of any statement
about the availability, provision or performance of such services,
- The use must be for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, and some
person having the right to use the mark either as proprietor or by way of
permitted user as the case may be. It is not necessary that the person using
the mark should reveal his identity.
Unlike the case in US and EU, very few unconventional marks have received
registration in India. Nonetheless, unlike the Trade and Merchandise Marks Act
of 1958, the Trade Marks Act of 1999 (the Act) and the Trade Marks Rules of 2002
do refer to non-conventional trademarks
A reading of Sections 2(1) (zb) and 2(1)(m) of the Act shows that the
definition of trademark
has been widened to include shapes, packaging and combination of colours. Section 3 of the Draft Manual provides a definition of the trademark as
including any mark as long as the mark is capable of being represented
graphically and capable of distinguishing the goods or services of one person
from that of the others. Nonetheless, it has been stated that colours, shapes,
sounds and smells will require special consideration during registration.
In addition, in accordance with Rule 25 (12)(b) of the Trademark Rules, 2002, an
application for trademark registration mandates its graphical depiction while
Rule 28 and 30 requires that it be represented on paper, in a durable form.
Therefore, this requirement acts as a significant impediment to the recognition
of olfactory marks as a legitimate trademark in India.
Definition of Trademark under the Indian law is not quite different from the
previous international treaties. It neither includes nor expressly excludes the
registrability of nonconventional trademarks. Even though it is open to
interpretation, the definition of mark doesn't involve any non-conventional
trademark but the Draft Manual issued by the Trademark Office provides for
special consideration for certain non-traditional trademarks. When it comes to
the consideration two questions are usually raised. One being the degree to
which the standards applicable to traditional trademarks adapt unconventional
subject matter and secondly where there is the presence of gaps in the existing
The problem with registration of non-traditional marks like smell marks is that
it cannot be represented graphically. However, the Indian Judiciary broke the
conventionality by granting protection to the manufacturers of Zippo lighters on
the basis of the shape of its Lighters to keep its counterfeiting in check.
Further, the boundary was pushed wherein Yahoo! Registered its sound under the
Indian Trade Mark Act, 1999.
Later, in the year 2009, the Trade Mark office came up with a Draft Manual which
gives the non-traditional marks distinct concern and entails certain provisions
with deal with the same. As of now, the provisions of the Draft Manual have not
been incorporated into the Indian Trade Mark Act, 1999. Consequently, the
registration of smell marks as a singular trade mark have not seen their road to
The primary reason for such a low registration of smell marks is because they
are defined subjectively and are therefore open to interpretation. The
complications that arise from human perceptions of odours lead to the argument
that subjective views are inadequate when determining whether the smell mark
functions as a trademark. Further, smell trademarks are arguably one of the most
difficult types to represent graphically.
VI. Findings Of The Courts
As regards to chemical formulae as the United Kingdom Government has rightly
noted, few people would recognize in such a formula the odour in question. Such
a formulae is not sufficiently intangible.
The question whether the mark was capable of being represented graphically was
referred to the European court of justice which held as follows:
- A Trademark may consist of a sign which was not in itself capable of
being perceived visually provided that it could represented graphically,
particularly by means of images, lines or characters and the representations
was clear, precise, self-contained, easily accessible, intelligible durable
- In respect of an Olfactory sign, the requirements of graphical
representability were not satisfied by a chemical formula, by a description
in written words by the deposition of an odour sample or by a combination of
Thus said, a chemical formula does not represent the odour of a substance, but
the substance as such, and nor is it sufficiently clear and precise. It is
therefore not a presentation.
As to the deposit of an odour sample it does not constitute a graphic
representation for the purpose of directive. Moreover, an odour sample is not
sufficiently stable or durable.
Accordingly, in respect of an olfactory sign, the requirements of the graphic
representability are not satisfied by a chemical formula by a description in
written words, by the deposit of an odour sample or by a combination of those
Advantages Of Scent Mark Registration
- Increase Sales
Scent can trigger instant emotional connections with customers, thus being very
effective in boosting sales. Exxon On The Run convenience stores highlighted a
new brewing system with coffee scents and saw a 55% increase in coffee sales.
- Heighten Value Perception
Customers tend to perceive a scented space as being of better quality. Study
participants were willing to pay 10-15% more for a pair of Nike shoes in a
scented room as compared to identical shoes in a unscented room.
- Expand Brand Recognition
Scent helps create memorable experiences and associations in people's minds.
Research shows at least 63% of consumers have chosen one store/brand over
another due to a stores pleasant scent.
- Enhance Customer Experience
Research indicates a 40% improvement in mood when exposed to a pleasant scent,
resulting in happier customers.
- Create a Welcoming First Impression
Scent sets a lasting first impression that connects emotionally on deeper levels
with your customers from the second they walk through your door. In fact, 82% of
consumers spend more time in a place that was pleasantly scented.
- Increase Linger Time
The right scent can encourage customers to interact with your product longer. In
a study conducted by Samsung, shoppers underestimated the amount of time they
spent shopping by 26% and visited 3x more sections when exposed to aromas.
- Enhance Interior Aesthetics
Whether your space is new or in need of a facelift, scent is an economical way
to create or enhance a modern ambiance, giving your business an updated look and
- Create Memorable Experiences
Scent can evoke a warm feeling of familiarity and trigger memories. People are
100x more likely to remember what they smell vs what they see, hear or touch.
- Influence Mood
Pleasant scents can help your customers feel relaxed, happy and ready to do
business. A fragrance expert can help you identify the perfect scent match for
- Combat Malodours
If your business struggles with malodours or produces an off-putting smell,
using an odour neutralizing fragrance can help to greatly reduce, neutralize, or
The battle for including olfactory signs for both commercial purposes, and
importantly, for use by the disabled is a new concept which the world is yet to
give a serious thought to. Nevertheless, if one day, smelling trademarks could
be viewed from the human rights perspective and used by the blind or the deaf
(who cannot hear the sound trademarks) to identify their required goods, it
would be a giant leap for humanity. Till then, I would hope that we don't turn
up our noses but allow the scent in the air to reach our humane senses. Once
this step is complete, rest assured, it will have a permanent mark, because,
haven't you heard, scent has the strongest effect on our memory.
While scent marks appear to be an innovative way to distinguish goods and
services, there is a strong case against the ability of scents to function as
reliable indications of trade source.
Scientific research on the human sense of smell indicates the highly subjective
nature of odour perception undermines the ability of scents to act as objective
and reliable indications of source. This not only prevents scents from
functioning as trade-marks, but also subverts reliable judicial administration.
Universal preferences for certain scents will also deplete the limited number of
desirable scents available for scent marks, resulting in scent mark depletion.
We can criticize the smell marks by two ways:
- Scents are too subjective to function as trade-marks
A trade-mark's function is to act as an indicator of source for goods and
services. Thus, the function of a trade-mark is objective � either the mark
functions as an indication of a particular source or it does not. Unfortunately
for scent marks and the legal systems they populate, the human sense of smell is
not objective but instead very subjective. Some individuals have a keener sense
of smell than others.
- Universal scent preferences will result in scent mark depletion
Depletion theory is a doctrine that has been applied in American trade-mark
law to colour trademarks. This theory operates on the principle there are a
limited number of sensory devices (i.e. colour, scent or sound marks) that will
be favourably perceived by consumers. Granting a trademark monopoly over one of
the few desirable marks available depletes the remaining pool of desirable
marks and thus adversely affects competition.
Depletion doctrine is readily applicable to scent marks as there are
cross-cultural preferences and aversions to smells. Shared cultural scent
preferences mean there are relatively few desirable scent marks to be shared
among traders. Granting a scent mark registration for one of these marks will
deplete the pool of desirable scent marks, reducing competition. Further, the
international nature of trade-mark registration means that a scent mark
registration in one country has the potential to deplete the available pool of
scent marks in other countries. Given universal human preferences for certain
odors, a scent mark registration in one country potentially depletes the pool of
marks both nationally and internationally. This reduces competition on a local
and global scale.
The fourth, and most serious, inability of scents to function as trade-marks
impacts the reliability of judicial administration. The subjective nature of
smell will unavoidably affect how the trier of fact perceives the evidence in a
scent mark infringement case. This will result in unpredictable outcomes in
scent mark litigation. While flexible, as opposed to strict, judicial
administration may be more just in some instances, the highly subjective nature
of scent perception means that litigants will truly be entering a lottery system
when they proceed to trial for scent mark actions. The end result is neither
flexible nor strict judicial administration, but arbitrary results that will
deleteriously impact scent mark litigation.
VIII. Challenges Faced by Our Scents
to Get Registered
Olfactory memory is the most unused mean to link a brand to consumers. The smell
as the most potent type of human memory can potentially identify a product if it
qualifies the criteria of a trademark. Smells have also the ability to recollect
pictures and emotions and this may affect consumer's attitude and decision
marking to purchase particular products. It can be held that once distinctive, a
smell is one of the most powerful manners to differentiate the goods of one
merchant from those of the other.
Protection of 'smell' as trademark has been a long-debated topic. Although
various countries have laid down specific provisions in regard to the protection
of smell marks, nevertheless the standards laid down by different countries are
in conflict with each other. Some arguments in favor of protecting smell marks
highlight the fact that the role of scent in today's product is not restricted
to sell but also extends to distinguish the product. Also, it plays an active
role in establishing a long duration odor memory. While arguments in against
focuses on consumer's access to product's scent before they purchase. It speaks
of the likelihood of confusion among consumer and the difficulty to
differentiate without expert aid.
In spite of the recognition gained by smell marks from various countries, it
still lacks backing of strong legal provisions and development is needed in this
branch of law. With more countries establishing provisions for the
registrability of smell marks a clear contradiction can be seen between the
standards laid down for the same by the countries. Where on one hand countries
like Australia and Europe depend on the Sieckman test, the United States
trademark law is guided by the Qualitex ruling of the Supreme Court.
The most basic challenge faced by a smell mark is the consumer's accessibility
to the smell before purchasing the product. If not then the basic purpose of the
smell to act as a trademark is defeated because the purchaser has to wait to
smell its scent till the product is put to use at home. This way he cannot
connect the odor with the origin and hence his decision won't be influenced at
the time of the purchase.
Another difficulty which usually arises in case of smell marks is that even
though a consumer recognizes the smell or finds it familiar, he may not be able
to connect the smell with the identity of the product or manufacturer on a
consistent basis. Regardless of whether an item's aroma operates as a root
identifier, the producer looking to shield that mark from infringement must have
the capacity to show that comparative fragrances may amount to likelihood of
Also, the total numbers of scents of promising character which are known to the
mass public through a written description are limited. Therefore, registration
of specific scents should not be allowed to evade depletion of the supply of
scents available for use by others.
Similar aroma mixes, just like similar colours can be hard to recognize without
expert help and when it comes to smell marks it proves to more difficult and
burdensome than colour marks in case of the practical difficulties faced in its
Taste marks may be easier to represent graphically � the SCT reports that the
graphic representation requirement was satisfied by using a written description
of the taste and an indication that it concerns a taste mark � but the hurdle
of distinctiveness is even harder to overcome as are assertions concerning
Scent marks appear to be an innovative and catchy way for traders to market
their goods and services. However, an equally strong cae made that scent
marks pose a significant dilemma for trade-mark law. The difficulties in
representing scent marks in trade-mark registries, the inability of scent marks
to function as stand-alone identifiers of trade source, the subjective nature of
scent perception, and scent depletion theory ultimately combine to undermine the
utility of scent as trade-mark.
It is often difficult for traders to represent such marks in the trademark
registries, it lacks the basis to perform as the sole identifier of the source
or origin, the theory of smell depletion and also the fact that smell or scent
is subjective in nature and it changes and depends from person to person and so
different consumer may perceive it in a completely different way based on their
opinion. All these together works in a negative way sometimes and challenge the
functionality and efficacy of smell marks as trademarks.
The comparative analysis of trade-mark regimes at the beginning of this paper
highlights that the future of scent marks is uncertain. No international treaty
mandates the registration of scent marks. In fact, some treaties, such as
Trademark Law Treaty, explicitly state the terms of the treaty do not apply to
scent marks. Regarding national laws, some jurisdictions are more tolerant of
scent marks than others.
For example, the Australian trade-mark statute now expressly contemplates scent
mark registration, and jurisdictions (e.g. Japan) that previously forbade scent
marks are now silent on the issue of registrability.
The Sieckmann ruling has created a contradictory situation in Europe with
respect to registration of scents under the European Community Mark (ECM)
system. ECM applicants are not barred from applying for scent registrations, but
simultaneously do not have readily apparent, acceptable methods to describe
scent marks on trade-mark applications. Meanwhile, there are jurisdictions whose
laws are silent on the registration of scent marks, such as Canada, and a number
of countries (e.g. Brazil, China and Mexico) which forbid scent mark
While it is uncertain whether scent marks will become more commonplace and more
widely accepted for trade-mark registration within individual jurisdictions, a
lack of uniformity re scent mark registrations may have deleterious effects on
national economies. Because scent marks are currently very rare, it remains to
be seen whether these marks are merely a passing marketing fad or may, in some
cases, become some of the most commercially valuable marks of the future.
Thus in conclusion it can be said that it is a fact that the way products smell
can be a huge determining factor in individual's life but lack of graphical
representation and arbitrary and random nature of smell or scent can sometimes
pose a risk in case of registration of a smell mark but a balance between the
utilization of technology by various Trademark Offices of different countries
and founding jurisprudence of trademark, the lacuna present in process of
protection of smell marks can be erased.
- Coca-Cola Tms.  rpc 685
- The Lauham Act Sec. 45
- In re Clarke, 17 U.S.P.Q.2d 1238, 1239 (T.T.A.B. 1990).
- Qualitex Co. v Jacobson Prods. Co., 17 U.S.P.Q.2d 1240 (TTAB, 1990)
- Chanel's Application, 31 October 1994
- Myles Limited's Application  ETMR 56, decided on 5 December 2001
- Sieckmann v Deutsches Patent-und Markenamt, Case C-273/00, 2003 E.T.M.R.
- Sumitomo Rubber Co's Application No. 2001416, 31 October 1994
- Unicorn Products' Application No. 2000234, 31 October 1994.
- John Lewis of Hungerford Ltd's Trade Mark Application p  RPC 28
- Sieckmann v German Patent and Trademark Office (case C-273/00) December
Authentication No: AG021710908360-5-820