Trademark Registration

Smell mark: Can smell be trademarked in India?

A number of studies have demonstrated that smell can trigger vivid and emotional memories. Also, it shows that the human sense of smell has extraordinary capacities however, Indian law is yet to come to terms with smell mark.  However, India’s position on it is not stagnant and is moving towards acceptance of unconventional marks. In this article, we shall discuss Smell Trademark.

What is a Trademark?

A Trademark is a sign of quality that assures that the product in question has emerged from a particular source. The uniqueness of a trademark and its popularity attracts customers to it.

In simple words, Trademark is a word, phrase, symbol, and or design that distinguishes the source of goods of one party from others.

Smell Trademarks

The trademark regime has witnessed the emergence of unconventional forms of trademarks like sound, smell, and taste. While sound marks such as the Nokia Jingle is pretty common, smell marks are rare to find.

In fact, smell marks was registered in the UK by Sumitomo Rubber for a floral fragrance or smell as of roses as applied to vehicle tires. It was followed by the first US smell trademark that was registered in 1990 after an appeal before the US Patent and Trademark Office Trademark Trial and Appeal Board. The mark was for a high impact, fresh and floral fragrance reminiscent of Plumeria blossoms which was used in connection with sewing thread and embroidery yarn.

Since then, there have been lesser registrations of smell trademarks. It also includes bubble gum scent for strawberry, cherry, and grape lubricants for combustion engines. The main reason behind this is because they are defined subjectively and are hence open for interpretation. The complications that arises from human perceptions of odors lead to arguments that subjective views are inadequate when determining whether the mark (smell) functions as a trademark. Moreover, these marks are one of the most difficult types to represent graphically.

Problems faced in registering Smell marks as a Trademark under the Indian Trademarks Act 1999

In order for us to understand the ambit of registration, we need to find out the answer to few questions.

Q-1 Is a smell mark capable of satisfying the functions of a trademark?

Q-2 Is a smell mark capable of satisfying the object of Trademark Law?

Q-3 If smell mark falls under the meaning and definition of trademark, then how it is one of the most difficult type to represent graphically?

We will tackle these questions one by one. To answer the first question, the functions of a trademark include identification, source, and quality, and advertising.  Where a trademark meets the above-mentioned functions it is irrelevant whether it is a conventional or an unconventional mark.

The nature of the Trademarks Act^[1] permits the marks (smell) to be placed in the trademark law. Customers may treat a particular smell on a product or in its packaging as signifying a brand. Thereafter like any other commodity, it would be able to identify and distinguish goods. In case where the customer already associates the scent with the source of the product, registration may look logical.

The objective of trademark law is to protect the public from confusion, and it also protects the business of the owner of a trademark and his goodwill that’s attached to the trademark.

The creators of Trademark law in India looked to modernize the law therefore, an open ended and inclusive definition has been provided for mark. Thinking in other way, unconventional marks finds a place in the definition of mark. This also includes marks such as smell, sound, etc. Basically, a trademark may be anything that identifies the source of goods and services.

Unconventional marks have no longer been an alienated concept in the trademarks world. It shows the need to interpret our domestic law as encompassing unconventional marks in the ambit of registration.

There are two essential requirements under Trademark:

• It should be capable of being represented graphically; and
• Secondly, it should be able to differentiate the products and services of one person from the other. 

To make sure that it is intelligible to anybody inspecting the registry of a claim for trademarks, a clause may be added stating the disclosure of the test conditions. Similarly, high-end smell sensors may be used that are highly sophisticated. This may overcome the hindrance that graphical representation poses. This method shall increase the search of objectivity in registration of the smell.

For successful registration, a well drafted and highly specific written description should be written that can be approved by a set of experts. It may result in successful venture for trademarks in India.

Graphical Representation of Smell Mark: Indian Law Perspective and the EU Trademark Directive

The issue with this mark arises at the time of recording the smell for registration as a trademark. It can’t be noted graphically, neither can it be stored in a bottle as it would decay. Moreover, there is no chemical formula for the smell also. Though there are some ways which can be devised so that there is no scope for confusion, however, Indian law doesn’t consider such methods and allows for only a graphical representation to describe a trademark.

The EU Trademark Directive that came into effect in early 2019 has removed the need for graphical representation of trademarks while applying for registration. The criteria now prescribe that the sign should be capable of being represented in a way to create sufficient clarity about the mark being protected.

Cases of Smell Marks Registration

There have been instances of such marks being registered abroad. For example, in case of UK, a tire company Sumitomo Rubber registered for rosy fragrance for the vehicle tires. We have discussed this above in this article.

Another company registered darts manufactured with a bitter beer scent. Another example is of a Dutch company that produces tennis ball with a scent of freshly mown grass. Overall in countries where emphasis on graphical representation is relaxed, marks such as these could be registered.

Conclusion

Indian trademark law presently doesn’t permit the registration of smell as trademarks. The rigidity of graphical representation can be reconsidered, and here the example of EU directive can be taken. Alternative methods of descriptions can bring in various unconventional trademarks.

Read our article:Step by Step Trademark Registration Procedure