Trademarks in India are governed by Trademarks Act, 1999. As per S. 2(1) (zb) of the Trade Marks Act, 1999 defines trade mark 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 and may include shape of goods, their packaging and combination of colours.[1] Although smell is not directly and specifically included in the definitions of trademark but nevertheless it is also a trademark.
What is the purpose of these trademarks?
The main function of a trademark is to enable consumers to identify a product (whether a good or a service) of a particular company so as to distinguish it from other identical or similar products provided by competitors.[2] Once the consumers are aware of how the products look, feel or smell, they identify the same with the trademark on the packaging.
But how can a smell be trademarked?
This category is also broadly described as non-conventional trademarks. Smell forms one of the five senses of the human being and hence is really important. The recollection of odour is known as olfactory memory. Odours take a direct route to the limbic system, including the amygdala and the hippocampus, the regions related to emotion and memory.[3]To obtain registration of smell mark applicants must be able to visually represent the products scent and must show it is distinctive from the product itself. A bottled sample of the smell for example would decay over time and therefore not be kept on a trademark register.[4]
The question that arises here is how can the smell be represented in a visual way? Even if the chemical formula of the perfume was to be written down the smell of the perfume cannot be determined with just the substances. One would have to describe it in such a manner that it is not confused with anything else. Other than that the registered smell must not arise out of the nature of the product itself.
In America, a written description stating that “the mark is high impact, fresh, floral fragrance reminiscent of Plumeria Blossoms” was accepted as a graphical representation and granted trade mark protection for sewing thread and embroidery yarn. [5]
The scent of rasberries was accepted in Myle’s Ltd. Application with respect to fuels and diesels.[6]
In 1994, Unicorn Products applied for the registration of a smell mark for their products by describing it as “the strong smell of bitter beer applied to flight darts”[7] . This application was also accepted and the mark was registered.
In Sieckmann v. Deutsches Patent-und Markenam[8]illustrates difficulties with the graphical representation of scent marks, as the European Court of Justice held under the European Trade Marks Directive that these representations, whether individually or collectively, could not satisfy the requirement of graphical representation. In Sickmann the applicant wanted to register compound methyl cinnamate as a scent as a mark under the classes 35,41 and 42 of the Nice Agreement on the International Classification of Goods and Services for the purposes of the Registration of Marks. The trademark also involved the chemical structure of methyl cinnamate and a scent sample. But the registration was denied as the norms required for graphical representation of the scent were not satisfied. The Court opined that the aim behind the graphic representation criterion is to empower a sign to be depicted visually in order for the scope of protection of the mark to be precisely determined.[9]
In India, the Draft Manual on Trademarks is the only official communication by the State on non-conventional trademarks. The Draft Manual on Trademarks states “Consumers of such fragranced goods are unlikely to attribute the origin of the products to a single trader based on the fragrance. Whatever may be the case, for purposes of registration as a trade mark, unless the mark is ‘graphically represented’ it will not be considered to constitute as a trade mark.”[10]
So it is very clear that even in India for a trademark of the smell is to be registered it has to be graphically represented.
Conclusion:
The Indian trademark laws do not provide with scent marks due to the difficulty of graphical representation as discussed above. The most famous case of the bestselling perfume by Chanel named Chanel No.5[11] is not protected under trademark due to the difficulty of graphical representation. Now this gives the competitors a chance to copy the perfume and sell the same product at a cheaper price.
[1] S. 2(1) (z b), Trade Marks Act, 1999.
[2] Making a mark, WIPO, https://www.wipo.int/export/sites/www/sme/en/documents/guides/customization/making_a_mark_nig.pdf.
[3] Colleen Walsh , What the nose knows, Harvard gazette (February 27, 2020), https://news.harvard.edu/gazette/story/2020/02/how-scent-emotion-and-memory-are-intertwined-and-exploited/
[4] Smell, Sound and Taste- Getting sense of the non-traditional trademarks, WIPO (01,2009), https://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html
[5] Lisa P. Lukose, Unconventional Trademarks : Novel Trends in The Modern Trademark Law, CNLU LJ (1) [2010] 22
[6] Supra 5
[7] Unicorn Products’ Application No 2000234 dated 31.10.1994: cited from Vatsala Sahay, “Conventionalizing Non-Conventional Trademarks of Sounds and Scents: A Cross-Jurisdictional Study”
[8] Ralf Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00, 12th December, 2002, European Court of Justice (hereinafter, unless the context otherwise requires, referred to as “Sieckmann’s Case”)
[9] Ibid Para 46 and 47 of the judgement.
[10] Available at http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draftmanual.pdf
[11] Chanel’s Application, 31.10.1994; cited from Nathan K G Lau, “Registration of Olfactory Marks as Trademarks: Insurmountable Problems?” 16 SINGAPORE ACADEMY L. J. 264, 265 (2004)
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