The difficulty of protecting olfactory marks

Not too long ago, this Kat discussed how difficult it is to protect tactile marks because they cannot be represented in a sufficiently clear and precise manner (here). The same is true of other types of non-traditional trade marks such as olfactory marks, as a recent decision of the German Patent Court demonstrates (case 29 W (pat) 515/21).

Background

On 3 September 2020, the applicant filed for a German trade mark for ‘sporting articles’ in class 28 with the following written representation of the mark:

The mark consists of the smell of honey from nectar of the common heather flowers (Cannula Vulgaris) on golf balls.

The applicant indicated the mark to be an ‘other type of trade mark’. The application form in Germany does not provide a box for ‘olfactory mark’.

The application contained the following description:

Commercially available golf balls are odour-free. Heather blossom honey, here in the form of honey from the nectar of flowers of the heather species ‘heather flower’ (Cannula Vulgaris), has, as shown in the description in section 3.1.1.2.1. of the new version of the guidelines for honey of the Food Code Commission at the [German] Federal Ministry of Food and Agriculture in the Version dated 27 July 2011, a characteristic, strong, aromatic, bitter smell. The trade mark consists of precisely this smell on golf balls.

The German Patent and Trade Mark Office rejected the application because the sign was not represented in a manner, which enables the competent authorities and the public to determine the clear and precise subject matter of protection (Art. 8(1) German Trade Mark Act). The applicant appealed.

The German Patent Court’s decision

The German Patent Court dismissed the appeal.

The Court found that for ‘other type of trade marks’, the description provided by the applicant forms part of the representation of the sign and is therefore decisive for determining the subject matter of the application. On that basis, the Court held that the sign is not represented in a sufficiently clear and precise manner.

The judges noted that the requirement of representability is a central substantive legal requirement. It serves the purpose of having a fixed form of the sign, which can be assessed for absolute and (if opposed) relative grounds for refusal. The representation also serves to display the mark in the register and is important in the assessment of genuine use. An acceptable representation requires the trade mark to be unequivocally defined and sufficiently precise. The Court also referred to the Sieckmann criteria, requiring a representation to be clear, precise, self-contained, easily accessible, intelligible, durable and objective (now explicitly mentioned in Art. 3(1) EUTMIR). The judges concluded that an application may not contain any element of subjectivity.

The Court summarized ways of representing olfactory marks, which have not been found to be sufficient in the past, namely:

• Indicating a chemical formula;
• Representation by way of gas chromatography;
• Indicating a code of an international classification of smells – because there is no such classification that is generally accepted at the moment;
• Submitting a sample of the smell – because it is not durable;
• Indicating a colour code, which is used by professionals in the perfume industry.

In the present case, the Court found that honey from nectar of the common heather flower is a rather rare type of honey. The effort to produce it is significant, which is why it is usually not produced at an industrial scale. Rather, it is produced regionally by beekeepers in small quantities. The taste, consistency and smell changes from harvest to harvest.

Beyond that, the description of the smell as ‘bitter’ is vague. It covers different olfactory sensations. The terms ‘strong’ and ‘aromatic’ lack objectivity. It is not clear when a smell is ‘strong’, ‘aromatic’ or both. Further, the sense of smell differs from person to person. What one considers to be ‘strong’, another considers to be ‘mild’.

Comment

While the reform of the EU trade mark law (including the Trade Mark Directive) allowed for protection of olfactory marks in principle (see here), the technology is not sufficiently advanced to allow their representation at the moment. The EUIPO Trade Mark Guidelines are clear on this (emphasis in original):

It is currently not possible to represent smells in compliance with Article 4 EUTMR, as the subject matter of protection cannot be determined with clarity and precision with generally available technology.

Article 3(9) EUTMIR specifically excludes the filing of samples.

The technology to reproduce scents reliably is on the way of being developed (so called digital scent technology, see here). If and when it becomes generally available, olfactory marks will be registerable, provided that the other requirements for registration are fulfilled. This seems one of the (rare) instances where the law is actually ahead of technical development and not the other way around.

Picture is by Roman Odinstov and used under the licensing terms of pexels.com.