Written by Amartya Gumaste the Author is a law student pursuing BA.LLB from DES Shri Navalmal Firodia Law College, Pune
In today’s competitive business world, Businesses are always looking for methods to differentiate their products and services from their competitors. Trademarks are one of the most popular ways to protect their brands and create a unique identity in the market. Traditionally, trademarks were limited to words, logos, and slogans. However, with the evolution of modern business practices, the scope of trademarks has expanded to include unconventional marks like sound, colour, and even smells.
The legal framework governing trademarks in India is the Trademarks Act, 1999, and the rules made thereunder. The said act under section 2(zb) defines a 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. While section 2(m) of the act defines ‘mark’ as a device, brand, heading, label, ticket, name, signature, words, letter, numerals, shape of goods, packaging or combination of colours or any combination thereof. This definition has been interpreted broadly to include not just visual marks but also non-traditional marks, including sound, smell, and taste marks. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) does not offer comprehensive protection to non-traditional marks, but it does not completely prohibit their registration either. This is evident from Article 15 (1) of the Agreement, which provides that member countries have the option to require that marks must be 'visually perceptible' to be eligible for registration.
There are 2 essential requirements for a trademark registration. These include:
Capability of being represented graphically
Distinctiveness from other products
As a strategy to get customers, manufacturers often add pleasant smells to their products such as cosmetics, soaps etc. Smell marks, also known as olfactory marks, are a type of non-conventional trademark that are used to distinguish the source of goods or services based on their unique smell or odour. The concept of smell marks is still a relatively new one, and their use is not widespread. However, there are a few examples of successful smell marks around different jurisdictions. The primary aim of trademark law is to safeguard the public from confusion caused by similar marks, while simultaneously protecting the interests of the trademark owner and the goodwill associated with the mark. In essence, trademark law provides a framework for balancing the interests of businesses with those of the public.
The first major impediment in registering a smell mark in India is to prove that the scent is capable of being represented graphically. As mentioned in Section 2(zb) of the Trademarks Act, a trademark has to be “represented graphically” to qualify for registration, such as a drawing, a photograph. However, there is no specific provision in the act that provides for the graphical representation of smells. In the case of Ralf Sieckmann v. Duetsches Patent und markenamt, an application was filed for an olfactory mark of a chemical substance used in the rubber industry . The scent was described as "balsamically fruity with a slight hint of cinnamon." The European Court of Justice (ECJ) held that an olfactory mark must be represented graphically and be clear, precise, self-contained, easily accessible, intelligible, durable, and objective. The mark failed to meet these criteria and was thus denied protection. This set a precedent for the strict requirements for olfactory marks in the EU.
Challenges faced while registering a smell mark
Any application for registering a trademark must adhere to Rule 25 (12)(b) of the Trademark Rules, 2002, which mandates the inclusion of a graphical representation. Rules 28 and 30 stipulate that the representation must be in a durable form on paper. The requirement to represent the smell mark graphically is essential because it enables the trademark registry to record the mark accurately and provide legal protection to the trademark owner. However, representing the smell of a product graphically is a difficult task. Another challenge in registering a smell mark is the subjectivity associated with smells. Smells are a subjective experience, and what one person might find pleasant or recognizable might not be the same for another. This subjectivity makes it difficult to establish a standardized reference point for the registration of a smell mark, leading to inconsistencies in the registration process. It can’t be stored in a bottle as it would decay and change with time. Enforcement of a smell mark gets even more complicated, especially in cases where the smell is an inherent characteristic of the product or is common to the industry. In such cases, it can be challenging to establish the distinctiveness of the smell mark and to prevent others from using it.
The Indian Trademarks Manual follows the same criteria mentioned in the Ralf Sieckmann case stating “Whatever may be the case, for purposes of registration as a trademark, unless the mark is ‘graphically represented’ it will not be considered to constitute a trademark .”
Doctrine of functionality
The concept of the functionality doctrine poses a significant legal challenge for registering scent marks. The doctrine prohibits trademark protection for a product's functional features, which can be critical to a competitor's product line, to prevent monopolies in the market. While the concept appears to promote healthy competition, it raises questions and implications for smell marks. Chanel's famous fragrance line, 'Chanel No. 5', which has been widely used in the fashion industry for decades, is a prime example of the challenges posed by the functionality doctrine. Olfactory/Smell marks in beauty or self-care items like cologne or perfume, lack protection of trademark registration due to their functional nature. It is absurd that a well-known brand like Chanel No. 5 cannot be protected under trademark law, which could enable others to duplicate the iconic scent without legal repercussions for the trademark owner.
Similarly, in 2013, Pohl-Boskamp (A German Pharmaceutical company) sought to register a trademark for the peppermint scent added to their nitro-glycerine spray, which is used to alleviate chest pains. However, after review, it was observed that the peppermint served a functional purpose as it could also be used to treat angina, a specific type of chest pain. Therefore, the trademark application was denied as the scent was deemed functional rather than distinctive.
Conclusion
In conclusion the concept of smell marks in India remains a novel and evolving aspect of trademark law, with its applicability under the Trademarks Act 1999 being a subject of ongoing contention. Despite the existence of successful examples of smell marks in other jurisdictions, their inherently subjective nature and the absence of well-established standards pose significant challenges for their effective protection within the Indian legal framework. Notwithstanding these challenges, it is essential for companies to adopt a judicious and strategic approach in leveraging smell marks to cultivate a distinct brand identity and safeguard their goods and services from potential encroachment by competitors. While the precise legal framework for smell marks may still require further clarity and refinement, companies can navigate this uncharted territory by carefully crafting and presenting compelling evidence to demonstrate the distinctive nature of their olfactory trademarks. This may involve undertaking rigorous consumer perception studies, sensory testing, and expert opinions to establish the non-functional, distinctive nature of the smell marks in question. Hence, while the path towards effective protection of smell marks in India may presently be uncertain, with diligent legal and commercial considerations, companies can seize the opportunity to establish a pioneering presence in this uncharted realm of trademark law, contributing to the expansion and enrichment of intellectual property jurisprudence in the country.
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