Recently, Sumitomo Rubber Industries filed an unusual application seeking to register an olfactory mark as a wordmark! Discussing this anomaly, we are pleased to bring to you a guest post by Akshay Ajayakumar. Akshay is a graduate of National Law University, Jodhpur, and has an LL.M in IP and Competition Law from the Munich Intellectual Property Law Center (MIPLC). He is currently a consultant at Sim and San, Attorneys At Law. His previous posts can be accessed here. Views expressed here are those of the author. He represents/ has represented clients in trademark disputes.
No Bed of Roses: Sumitomo Rubber Industries is Seeking to Register Floral Fragrance Reminiscent of Roses as Applied to Tyres in India
Akshay Ajayakumar
The question of whether floral fragrances can be registered as a mark or not is again coming to the forefront with the recent application by Sumitomo Rubber Industries, Ltd. (‘Sumitomo’) for an olfactory trademark described as “floral fragrance/ smell reminiscent of roses as applied to tyres” under application no. 5860303 in class 12 for “tyres for vehicles” on 23 March 2023 on a “proposed to be used” basis. The article analyses Sumitomo’s application and the requisites for registration of an olfactory mark.
A Brief About Olfactory Marks
Sumitomo’s application is particularly interesting because this was the first olfactory trademark registration in the UK (see here) and has since lapsed. This mark was registered in 1996 before the Court of Justice of the European Union (CJEU) ruled in the case of Sieckmann v Deutsches Patent- und Markenamt in 2002 that graphical representation of trademarks must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective“. Thereafter, no olfactory mark has been registered in the UK or the EU (see here). In Sieckmann it was found that a description (“balsamically fruity with a slight hint of cinnamon’“) did not meet these criteria and therefore, rejected Sieckmann’s application for a trademark (you can read about it more here). Essentially, a worded description would remain subjective, a representation in chemical composition would not identify the exact scent/odour, and a sample deposition may be insufficient as scents are often volatile. Currently, olfactory marks are considered not acceptable by the EUIPO (see here).
In India, the primary barrier to the registrability of a smell mark (considered here) is the need for a “graphical representation” and it is termed as the “representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in digitised form;” (definition under Rule 2(k) of the Trade Marks Rules, 2017(‘Rules’)) as mandated under Section 2(1)(zb) of the Trade Marks, Act 1999 (‘the Act’). Also, Rule 23(2) of the Rules mandates an application for the registration of a trademark shall explain with sufficient precision, a description by words, of the trademark to determine the right of the applicant and be able to depict the graphical representation of the trademark. The draft trade mark manual goes to the extent of stating that smell marks do not meet the requirement for graphical representation and hence, it is not registrable.
Sumitomo’s Floral Fragrance
In the current instance, the mark was applied as a word mark as there is no option for an application as an “olfactory mark” with a written explanation that it is an “olfactory mark”. Surprisingly, the Registry did not object to the graphical representation of the mark but considered the mark non-distinctive under Section 9(1)(a) of the Act (floral smell for tyres are non-distinctive ??!!) and descriptive of the kind, quality, intended purpose of the goods or other characteristics of the goods under Section 9(1)(b) of the Act. The lack of objection regarding the graphical representation is peculiar and may be explained by the classification of the mark as a word mark- “floral fragrance/ smell reminiscent of roses as applied to tyres” (explains the lack of distinctiveness and descriptiveness objection). The agent responded to the examination report claiming acquired distinctiveness and relies on the lapsed UK registration.
This is another example of how mindlessly some trademarks are examined at the Trade Marks Registry in India- An olfactory mark may attain registration because the Registry never understood it to be an olfactory mark! In any case, the instant application parallels the application in Sieckmann (“balsamically fruity with a slight hint of cinnamon’“). Therefore, in the author’s mind, it is astounding that an objection about the graphical representation was not raised. Additionally, the definition “floral fragrance/ smell reminiscent of roses as applied to tyres” can be argued to be not with sufficient precision as mandated under the Rules (smell of what kind of rose? and smell reminiscent of roses not of roses).
This is a good opportunity to explore the possibility of registering an olfactory mark in India and clear the air regarding graphical representation. However, the Registry seems misguided and has raised questionable objections. Non-distinctive marks are not capable of distinguishing the goods or services of one person from those of another person and the smell of roses for tyres is arbitrary (tyres do not smell of roses!) and hence distinctive. Descriptive marks usually ‘consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service (again, tyres don’t smell like roses!) Clearly, floral fragrance/ smell reminiscent of roses as applied to tyres is arguably distinctive and not descriptive of tyres. The application is currently objected to and will be listed for a hearing soon and maybe the Registry will come to senses regarding the type of mark it is dealing with (as per Rule 33 of the Rules, the Registrar has the power to reexamine a trademark before advertisement). Or maybe, all the while, such a worded representation would have qualified as a graphical representation in India (like in Australia, however, it may require a specimen at the examination stage), and it was not known for the lack of trying (despite the draft trade mark manual saying otherwise). If so, a clarification from the Registry about such worded representations being acceptable will be appreciated. Anyway, this is a space that needs to be observed till that happens. The policy argument regarding the need for a proper graphical representation of olfactory marks is dealt with here.
