The basic rationale behind a trademark as a word, symbol or signifier is for the identification of products of the manufacturers by certain symbols, marks or devices so that they can distinguish their goods from similar types of goods manufactured by the other manufactures.
The essential function of the trademark law is to give vested rights to those proprietors who use words, names, symbols or devices to distinguish their goods or services from others. Over the past few years, there have been constant attempts made to extend the trademark protection in the unexplored areas to develop new concepts in the trademark laws in order to keep pace with aggressive commercialization. The ambit of intellectual property law has therefore taken unprecedented levels and along with it, the trademark protection is broadened all over the world.
The non-convention trademarks are being widely accepted in recent times for the expansion of the definition of the trademark under the legislations. The Olfactory marks contrary to the traditional trademarks cannot be graphically represented even after its high level of peculiarity and therefore, an olfactory mark faces huge difficulty for its registration.
There has been no reliable system till date for graphical representation of the olfactory marks. Different countries around the world have adopted a different method of registration of Trademarks. Generally, registration of a mark is allowed if the mark is distinctive in nature. However, till date, there are no set parameters to represent olfactory marks graphically in clear, precise, self-contained, easily accessible, intelligent, durable and objective manner: a description of a scent in words is not objective, a chemical formula is insufficiently intelligible and a sample of the scent is not durable enough. In some of the countries the smell marks are registered if in the application a graphical representation of an olfactory mark is made and in some cases, the description of the smell of a product is protected under the copyright law.
UK AND EU PERSPECTIVE:
A mark can be simply registered in the European Union if the graphical representation of the mark is comprehensible, self-contained, durable, objective and accessible. For registration of a mark, a mandatory requirement is that the mark should be perceived unmistakably by one and all. Absence of this might lead to its non-registration and infringement of the mark of another. An olfactory mark as we know cannot be represented graphically, so the question it poses in front of us is that whether an olfactory mark can constitute a trademark at all? This question was taken up for the first time in the Sieckman case1 which was filed before the European Court of Justice (ECJ). The ECJ, in this case, held that visual perception of a mark is not a necessary condition as far as the mark could be graphically represented by its proprietor.
The ECJ while deciding whether a 'balsamically fruity smell with a slight hint of cinnamon' was registrable or not, the Court concluded that since it cannot be graphically represented as per the requirement of Article 22 under Directive 2008/95/EC of The European Parliament and of the Council. Furthermore, the ECJ in its view expressed doubts that the description of a smell would not be enough for the registration and neither would the chemical formula of the smell, nor the depositing of a sample of the product with its smell.
United Kingdom Court in the case of R v. John Lewis3 has refused an application for 'the smell, aroma or essence of cinnamon' as a trademark for furniture. The trademark was refused by the Court as the verbal description was found not being good enough to be considered as a graphical representation. But the decision would have been different if had been taken with reference to certain standards4. As the smell of fresh cut grass was registered for tennis ball, the odour of beer has been registered for dart flights and smell of roses for tires have been registered as European trademark under the trademark law of UK5. However, there is still the possibility to criticize these trademark registrations on the basis of Sieckman Case. The most fundamental question which could be posed regarding these registrations is whether freshly cut grass smells uniformly the same on every occasion and whether a prudent man could distinguish the difference in their odour. Since it is impractical, the arguments made for registration under the EU trademark law that all the sensory perception can be used as a trademark fall short of adequacy for their registration as their distinction is impractical and does not have a uniform system. Taking into account the practical aspects, registration of olfactory marks are difficult to obtain in the European Nations till further advancement in the technology is made which converts this impracticality of registration of the olfactory mark to practical registrable marks of manufacturers.
Under United States Trademark law, marks such as olfactory and sounds which are not possible to be graphically represented, can be registered if explained by a written detailed description under the Trademark Manual of Examining Procedure. The US court of law recognized that smell mark can also be registered as the trademark in the case of In Re Celia Clark6 where acceptance was given to the application for registration of 'a high impact, fresh floral fragrance reminiscent of Plumeria blossoms' for products such as sewing thread and embroidery yarn. The court, in this case, based its opinion on the fact that the fragrance used by the applicant is not an inherent attribute of products for which it is used. The products are not such for which the smell is an essential attribute. The argument for accepting the smell as a trademark was based on the premise that scent is comparable to the colour and hence is registrable. One of the arguments made against this judgment was that it was made being ignorant to osphresiology, which talks about smell and scent. The premise on which the argument was based that scent and colour being comparable was pointed contrary to scientific evidence and points that such a contrast is misleading in nature7. The scientific evidence shows that the smell of a product can be affected by the temperature humidity and wind conditions and can strengthen and weaken the potency of the smell mark. Furthermore, a smell has no independent identity but requires other sensory memory to enable its recall. Detection and recognition of a smell depend on various factors, one of the factors being the health of the individual perceiving the scent which is a 'Personal Variable'8. The personal variable also includes natural predispositions, such as physical and mental abilities of an individual.
The Trademarks Act, 1999 provides the definition of a trademark 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 the shape of goods, their packaging and combination of colours or any combination thereof".
The protection of a smell mark is not addressed in TRIPS, EC directive or Community Trademark (CTM). India, having derived its trademark law from TRIPS, neither registers the smell marks nor considers the protection of these marks in the court of law under the intellectual property rights regime.
As we can infer from the above perspective that formulation of different approach has made in order to deal with smell mark application in the respective region. Still, the characteristic features and test of distinctiveness are in the stage of development. The standards which are laid down regarding these smell marks are from a relatively generous approach rather than the protection of the public interest approach.
In order for a fragrance to be a distinctive mark of a product, people should first have access to the product's odour in order to differentiate the product of the proprietor from other products. Then and then only the scent can influence the decision of a consumer to purchase the product. If the consumer has to wait for the scent of the product till it has been put to use in order to smell to function as a trademark, the point of a trademark is lost.
Whereas James Hawes, a California Intellectual Property Attorney asserts that scent merits the product, basing his view on the study of Hammersley9. Hammersley in his scholarship has a view and explains that there is a strong relationship between scents and human memory. So the scent marks do influence the decision of the consumer while purchasing the product as the human memories can develop a strong relationship with the scents, it also acts a distinctive mark for identification of the product and services. According to him, the registration of fragrance marks must be differentiated from other types of trademarks.
From the above study, it looks like the United States Trademark law has decided upon the Qualitex10 ruling and the European Courts have formulated the Sieckmann test for deciding. According to these rulings, it is argued that India would be required to develop a system or amend the Trademarks Act, 1999 to include protection for these non-traditional marks as traders and manufactures of the products are using scents as a marketing tool, the protection should be extended to these non-traditional source identifiers as well.