Analyzing Smell Trademarks: Laws, Significance and Issues

Smell marks as a non-conventional mark: An overview

In today’s world, businesses are constantly striving to stay as distinct as possible by creating products with an element of uniqueness incorporated into them. This may include creating products with certain distinct features, such as a particular smell or a sound that is exclusive to the product and the brand. Typically, companies attempt to create products with a specific smell, taste, color, or sound to trigger a consumer’s bodily senses. Smell has been one of the most central senses for human beings. Thus, several companies have attempted to manufacture products implanted with a particular smell that is exclusive to the brand. In his paper titled ‘Smell Marks: Breaking Conventionality’, Abhijeet Kumar has argued that scent can trigger a person’s and directly impact the chances of a consumer purchasing the product. This implies that a consumer is more likely to buy a product if it triggers their senses.

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The inculcation of such features into products and services has snowballed into the rise of a separate class of trademarks known as ‘non-conventional trademarks’. Smell trademarks refer to a type of non-conventional trademark wherein the scent of a particular product (which is considered a distinct characteristic of that product) is legally registered. Currently, numerous companies have registered scents that are implanted in a particular product as a recognizable and distinct characteristic of their product. Some of the most popular examples of smell marks include Manhattan Oil’s “Fuel Fragrances” that carry the smell of strawberries, cherries, and grapes, Hasbro’s Play-Doh clay’s smell, Sumimoto tires that carry a rose scent, Flowery musk scent’s that are sprayed regularly at Verizon stores, Grendene’s bubble gum-scented jelly sandals and Lactona’s strawberry-scented toothbrushes.

 Global and Indian laws concerning smell trademarks

• Smell marks: Perspective in the UK and the US

While several countries have allowed the registration of smell marks, laws concerning the registration of smell marks are largely inchoate. In the US, the Lanham Act may serve as a basis for registering smell marks. Although olfactory marks are not mentioned in the Lanham Act, the USPTO recognizes that scents can work as identifiers and is a distinct characteristic of a particular brand or product. Thus, Court decisions and the USPTO have time and again granted the registration of smell marks. One of the first smell marks registered was the ‘plumeria blossom scented thread’ filed by OSEWEZ. Most recently, in 2019, the EU Trademark directive elucidated that the graphical representation of trademarks would not be mandatory for application purposes. This implies that as long as the mark can be represented in a manner that would imply that the mark represented is unique and is capable of being protected, smell trademarks can be registered. In sum, the criteria concerning the graphical representation of a trademark are relatively relaxed in the US and the UK.

This has led to several registrations of small marks in the UK as well. For instance, Sumimoto, a tire company, registered a smell mark for their tires which carried a rosy fragrance. Another notable instance is when a tennis ball company filed a smell mark application in 1999 before the Community Trademark Office in the jurisdiction of the European Union. The company aimed to protect the smell of ‘freshly cut grass’, which was implanted on the tennis balls. Although the Community Trademark Office first rejected the application since the mark cannot be graphically represented as per Article 4 of the Community Trademark Regulation in the EU legislation, the applicants challenged the Trademark office’s decision. Finally, the Board approved the registration of the smell mark since it was a recognizable component of the tennis balls.

• Smell marks and Indian trademark laws

Currently, Indian laws do not permit the registration of smell marks. The pre-requisites for registering a trademark include graphically representing it. Rule 25(12) b of the Trademark Rules, 2002 makes it mandatory to represent the trademark graphically. Section 2(zb) of the Trademarks Act explicitly states that a trademark is a mark capable of being graphically represented. Additionally, rules 28 and 30 state that the trademark must be represented on paper. Thus, conclusions can be drawn that Indian trademark laws are not accommodative of non-conventional trademarks such as smell marks which cannot be graphically represented.

Ramifications concerning the registrability of smell marks

• Inability to represent scents in graphical formats

Time and again, several scents were restricted from being registered as smell marks due to their inability to be represented graphically. Most prominently, this was noted in the case of Ralf Sieckmann v. Deutsches Patent und Markenamt. In Sieckmann, the ECJ denied the registration of scent on the following grounds:

“(a) a chemical formula depicting this scent did not represent the odor of a substance, was not sufficiently intelligible, nor sufficiently clear and precise; (b) a written description was not sufficiently clear, precise and objective; and (c) a physical deposit of a sample of the scent did not constitute a graphic representation and was not sufficiently stable or durable.”

From the aforementioned criteria laid down by the ECJ and trademark laws created for conventional trademarks that are still in use by several countries, conclusions can be drawn that it is increasingly difficult to trademark scents since they cannot be represented graphically.

• Functionality doctrine as an impediment for obtaining scent marks

Several cases have noted that the functionality doctrine has created unprecedented consequences when it comes to the registrability of scents.  According to the functionality doctrine, a product that consists of a feature that serves a particular function would be ineligible for trademark protection. Time and again, the functionality doctrine has restricted perfumes, cleaning products, and colognes from registering their smell marks since the scent is a functional feature of the product. For instance, in 2013, Pohl-Boskamp attempted to trademark the peppermint smell implanted in a nitroglycerine spray used to relieve chest pains. However, upon review, it was noted that the peppermint that was added to the spray could be used to treat angina, a type of ischemic chest pain, and was thus, deemed to serve a functional purpose. Consequently, the applicant was denied registration of their scent.

Smell marks: The way ahead

Smell marks are an extremely creative way to boost the distinctiveness of a particular product. Research has proven that a brand is likely to stay ahead of its competitors by manufacturing products that trigger the bodily senses of its consumers thus, making it a factor that would improve the commercial viability of a brand. However, several countries are largely unclear on the conditions that one must take into consideration for legally protecting a scent. Thus, it is imperative that regulations and laws must be created that would specifically deal with the registration of non-conventional marks such as smell marks. Secondly, since providing a graphical representation of the scent is possible, other methods through which a description of the smell can be produced should be considered. This may include using scientific methods such as gas chromatography.

Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad), in case of any queries please contact/write back to us at  support@ipandlegalfilings.com.