It is well settled that the function of a trademark is to give an indication to a purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market. Under modern business conditions a trademark performs four cardinal functions: (1) identifies products and its origin; (2) guarantees its unchanged quality; (3) advertisement; and (4) creates an image of the product. Considering aforementioned aspects pertaining to the trade marks, it is possible moot that a ‘smell’ can be afforded the protection of trademarks, too. These days, several industries are churning a tremendous profits from their cosmetics, perfumes, so on and so forth. Herein, the common point in these products is appeasement of the consumer’s olfactory sense.
Technically, the Indian Trade Mark Act, 1999 (TM Act) does not include any smell, taste, etc. in the definition of trademarks; but neither does it exclude them explicitly from the definition. Thus, the contours of trademarks are widening rapidly. Sound, movement, colour, texture, etc. can be protected under the umbrella of trademarks. However, this article chronicles an excursus pertaining to ‘smell mark’ alone. First and foremost, we will analyse the scope and desirability of non-conventional trademarks with reference to the smell marks. Next we will acknowledge the approaches taken by foreign jurisdictions. Then we will see the position of olfactory marks in India. While doing so, we will try to point out certain practical difficulties about registering a smell mark. In light of these broad headings, we delve deeper into this discussion.
Non-Conventional Smell Marks vs Practicalities
Non-conventional trademarks are those marks which do not fall under the usual understanding of trademarks. These trademarks are not restricted to names, symbols, devices, packaging; but are also extended to 3-D marks, motion marks, sound marks, smell marks, etc. The notion of smell marks have evolved as an outcome of manufacturers giving scent, fragrance and smell to their products in order to distinguish their products from those of others. In India, hardly any jurisprudence is developed in this subject matter. This truancy in law will fetter the judges in determination of cases which seek to examine the questions regarding smell marks.
In order to register a smell mark, it is pertinent to represent that smell graphically. We will be dealing with the peccadillo of graphical representation at length in the later part. There are certain other practical difficulties when it comes to the smell marks.
Odour gets affected due to humidity, heat and wind conditions. Owing to such conditions, the smell may get weakened or strengthened. Perceptibility or understanding of the smell is yet another factor in this regards, and thus, physical, mental abilities, individual’s sensitivity and health play a cardinal role in determining a smell mark. Thus it is possible to argue that subjectivity of the authorities will play a major role in determining the smell marks. As an outcome of this individual perceptibility of the courts and trademark registry, no straight jacket formula can be applied in this branch of jurisprudence, inter alia, opening a wide room for beaucoup conundrums. Now, it is necessary to point out that there can be no registration of ‘smell’ singularly and if such a smell is to be described, it should be done so accurately that there should be no room for this description to confuse with other smells.
Lessons from abroad
In the United Kingdom, perhaps the first occasion wherein an application was filed for a smell mark was by a perfume company, ‘Chanel’ for the scent of its fragrance Chanel No. 5. Since the fragrance was the product itself, the trademark was rejected on the grounds of the mark being functional. Nevertheless, on the very same day, Sumitomo Rubber Company successfully registered ‘a floral fragrance/ smell reminiscent of roses as applied to tyres’ as a trademark and Unicorn Products also successfully registered ‘a strong smell of bitter beer applied to flying darts.’ In UK, trademark applications for ‘the smell, aroma or essence of cinnamon’, ‘scent of raspberries’, etc. were rejected.
A very prominent case in this regards is that of Sieckmann wherein trademark for ‘the smell of balsamically fruity with slight hint of cinnamon’ was rejected. But two questions arose in front of the European Court of Justice (ECJ), viz. (1) whether it is fine to produce the mark which cannot be represented graphically by some other aids; and (2) whether the requirement of graphical representation as given in the European Trademarks law met when the odour is reproduced by chemical formula, description, sample or combination of these. The Court opined that the statue does not expressly exclude signs which are not in themselves capable of being perceived visually. Nevertheless, the ECJ refused the mark as it considered the description to be inadequate and also declined representation of an odour through chemical formula. American jurisprudence pertaining to trademarks is governed by the Lanham Act. Just as India, there is neither express inclusion nor express exclusion of smell marks. In the case of Two Pesos Inc. v. Taco Cabana Inc. the American Supreme Court opined that, colour, texture, graphic and other sensory marks like odour or touch fall under the domain of Trade Dress. A breakthrough in American trade mark laws was brought by In re Clarke, wherein the newly manufactured sewing and embroidery yarn, which was the sole producer of scented yarn, was given a trademark of this scent which was described as ‘high impact, fresh, floral fragrance, reminiscent to Plumeria blossoms.’ It is imperative to understand that for a mark getting registered as a trademark, it has to be clear, precise, self-contained, easily-accessible, durable, intelligible, objective in nature. Of course, de jure it is possible to register a smell mark; but the probability for the same is meek. In light of Sieckmann, which is accepted widely, the aperture for receiving a trademark gets even narrower as chemical formula, written descriptions, samples, electronic sensory analysis and graphic profile is rejected.
Indian Jurisprudence pertaining to Smell Marks
Section 2 (1)(zb) TM Act defines 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 shape of goods, their packaging and combination of colours.” However, the ambit of this definition is widened by the draft Manual of Trade Marks, Practice and Procedure as it understands ‘mark’ to be an all-inclusive entity which is only required to distinguish goods and services of one person from another. However, the major hindrance in Indian IP regime of non-conventional trademarks is graphical representation. For a trademark registration, it is mandatory to represent the mark graphically i.e. it should be able to get printed in a journal; simply put in a “paper form.” By permitting a digitized form of representation, concept of graphical representation is broadened.
By strictly relying on definition given Section 2 (1)(zb) of the TM Act, it is not impossible to register a smell as trademark in India. It is imperative to understand that the smell in question should be distinctive of the product itself, in other words, the smell should not be the outcome of the product or service. Another impediment here is that the smell needs to be represented graphically, either on paper or digitally, and the olfactory marks are unable to pass the muster of this graphical representation enshrined in Rule 26 of the 2017 Trademark Rules. One can argue that one of the means of graphical representation is through the chemical formula, but we have to appreciate the fact that the chemical formula represents the chemical substance/ components and not the actual smell. Of course, owing to the chromatographical analysis or other such scientific methods, the possibility of smell marks getting registered increases. Even then, such tests ultimately fail because of compulsory requirement of graphical representation.
Concluding Remarks
At this juncture, it is pertinent to point out that Indian law regarding the nonconventional trademarks by and large follow the similar standards as that of American and European laws, and has appreciated the principles laid down in several landmark judgements in these jurisdictions. However the smell mark as a non-conventional trademark has been sidelined and Indian jurisprudence in this subject matter remains ignored. This lacuna is untouched even by the 2017 Trademark Rules. Lack of jurisprudential progress in this subject matter will lead to considerable inconsistencies while granting trademarks to the smell and settling the cases on this issue. However, owing to the absence of any claims for registration of smell marks before the Indian Trademark Registry and due to an absence of claims of those affected by such a lacuna in the law, jurisprudence regarding smell marks in India is still in an embryonic state. In light of several international precedents and evolving statutory standards, the authors firmly believe that the issue of smell marks will be settled very soon.
