Intellectual Property RightsRecognition Of Smell As A Trademark In India

INTRODUCTION

The major objectives of the Trademark Act, 1999 (hereinafter referred to as “Act”) is to define the rights obtained through Trademark registration, their transfer and assignment, the types of infringements that may occur, the associated fines, and the remedies that may be accessible to the owner.

The Act defines Trademark under Section 2(1)(i)(viii)(zb) as;

“Trademark” means 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 colors.

It can thus be concluded that traditionally Trademarks were just logos, taglines, and symbols. However, over time, they have evolved to represent other things as well, such as product shapes, colors, sounds, smells, shapes, texture, motion, ambience, or packaging of the products or services, which are now known as ‘Non-Conventional’ or ‘Non-Traditional Trademarks.’

CONCEPT OF NON-CONVENTIONAL TRADEMARK

Non-Conventional Trademark also known as “Non-Traditional Trademark”  are a  separate category or new types of mark that form instant connection with the company by engaging the senses of taste, sound, touch etc.

These are those trademarks which does not fall under the definition of conventional Trademark, i.e., these Trademark does not only limits to words, symbols, name, device, packaging or combination of colors but also encompass slogans, feel, smell, and taste marks as well as three-dimensional marks, sound, motion, position, hologram, and other marks.

There is no specific provision under Indian Legislation for Non-Conventional Marks except for sound marks, which is specified under Rule 26(5) of the Trademarks Rules, 2017 (hereinafter referred to as “Rules “) states that “When a sound is used as part of a trademark registration application, a copy of the sound that is no longer than 30 seconds in length and has been recorded on a medium that allows for easy and audible replay is required, along with a graphical representation of the sound’s notations”. While this clarifies the procedure for sound marks and also is a possible benchmark for other visual marks, however, how to convert scents, tastes, textures into graphical representations is not known yet. It can be observed  that Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as “TRIPS”) don’t have any provisions for Non-Conventional Marks, either.

Under Article15 of TRIPS states that “signs, specifically words, including personal names, letters, numbers, figurative components, color combinations, and any combination of these signs, are eligible for trademark registration”. Thus, it can be comprehended that only those signs which are capable of representation are regarded as Trademarks.

Moreover, an Unconventional Mark, like any other mark intended to be protected as a trademark, must have the communicative power to distinguish one person’s products and services from those of another, i.e., be unique enough. According to Section 2, Article 15 of the TRIPS Agreement, differentiation is a necessary condition prior. As a result, an Unconventional Mark does not conform to the typical categories for a trademark under the current legislation. It extends beyond what has been defined and remarked on.

TYPES OF NON-CONVENTIONAL MARKS

1. Olfactory Marks: When the source of good is identified as smell than it is termed as Smell Marks. For example, Brazilian manufacture ‘Grendene’ uses bubblegum scent for shoes and footwear. But Olfactory Marks for beauty product such as perfume are not eligible to be registered as Trademarks.

2. Sound Marks: The Sound is a Trademark category that is expressly recognized under the Rules. This recognition has provided business to achieve more beneficial methods to attract, allure and appeal the customer in a competitive market. It facilitates brand protection and the growth of the business by building the image of the business.

3. Hologram Mark: In this Hologram are used to accomplish Trademark activity for peculiar identifying the commercial origin of products or services. India by far hasn’t received any application for the registration of hologram mark.

4. Motion Marks: These are made by using computer software and animation technique to create animated logos to attract a customer base. These are rarely registered as they have just gained importance with technological advancement.

5. Trade Dress: It represents the overall look and appearance of the packaging of the product.

6. Taste Marks: The graphically representation of taste is easy as the written description of the taste can be used to indicate the taste of the goods. There is no application filed for the registry of taste as a Trademark.

WHAT IS SMELL AS TRADEMARK?

Smell Trademarks is the claim of the owner over a specific smell. Smell marks originated as a result of manufacturers adding odors or fragrances to their products to distinguish them from comparable products. The factory sense is one of the most powerful senses capable of recording in human memory. However, as previously stated, the registration of a scent mark has been made possible subject to the requirement that the smell be visually depicted. In terms of registration, this circumstance is the problem’s vortex. If such a smell is to be described, it must be described in such a way that it cannot be mistaken for any other smell. Furthermore, the odor to be recorded must not be natural.

Recognition of Smell as Trademarks in India

The registration of smell mark is a relatively new and uncertain field under the Act. The Act does not explicitly state whether Smell Marks can be registered or not, and the registration process for such Marks is complex. In order to be eligible for trademarking, the Smell must be a unique feature of the product and not serve a functional purpose. Additionally, Indian Trademark law requires a pictorial representation of the feature to be Trademarked, which is challenging for fragrances. However, the Zippo Manufacturing Company case has set a precedent for Non-Conventional Trademarks, such as the design of the product. It is possible that courts will accept and apply more non-traditional Trademarks for the future. The current Intellectual Property laws may need to be amended to accommodate such developments.

Challenges Evolved in registration

It is relevant to note that even the Draft Manual of the Trademarks: Practice and Procedure, March 2015 declares that, since smell cannot be represented or described into words, so it does not satisfy the definition of graphical representation under rule 2(1)(k) of the Rules.

Therefore, it could be concluded that registration smell is a difficult task and due to which no such Trademark appears to be registered in India.

1. Graphical Representation of Smell Marks: India does not follow the lenient way for the representation of the Trademark it is compulsory for the mark to be able to be presented in paper form for it to be registered as a trademark, which is practically not possible.

2. Proving the distinctiveness of the product: For a smell or scent to hold a distinct characteristic, it is pertinent to verify that the smell or scent has not been acquired from the natural characteristic that the smell or scent holds.

SMELL AS TRADEMARK: AN INTERNATIONAL PERSPECTIVE:

In the case of Ralf Sieckmann v. Deutsches Patent und Markenamt [C-273/00, 2003 E.T.M.R. 37] the importance of graphical depiction was clarified. The “Sieckmann seven-fold Test” was established by the European Court of Justice in this case and stipulated that a graphical depiction of scents must meet the following requirements in order to be valid: “clear, precise, self-contained, easily accessible, intelligible, durable, and objective.”

The Myles Limited case [R 711/1999-3] discusses the significance of product uniqueness. This case concerns the subject of whether the scent of raspberries could be registered in relation to fuels, including motor fuels, notably diesel as a heating, engine, and fuel. According to the verdict, the registration of the raspberry scent was rejected. Although the “scent” could be represented graphically, it lacked the ability to stand out.

In the case of Re Celia Clark [17 U.S.P.Q.2d 1238 (1990)], a Trademark was approved for fabric that has “a high impact, fresh floral fragrance reminiscent of plumeria blossoms.” The fragrance of the product was not considered by the Court to be an intrinsic component, meaning that it was not necessary for it to work. It passed the criteria for uniqueness and non-functionality.

Despite the lack of statutory conviction, the global judiciary is likely the most open and accommodating when it comes to the registration and recognition of non-conventional marks.

AMLEGALS REMARKS

Indian Trademark law, currently, does not permit the registration of smell as trademarks and has no precedent for support either, with graphical representation during registration being the biggest impediment to the process. Several gaps need to be plugged in before it is possible in India.

While it is unclear whether scent marks will be used more frequently and approved as legitimate Trademarks in specific countries, a lack of uniformity in scent mark registrations could be harmful to national economies. Since scent markings are currently fairly uncommon, it is unclear if they will become some of the most valuable commercial marks in the future or will simply be a passing marketing trend.

Thus, in conclusion, it can be said that although lack of graphical representation and the random and arbitrary nature of smell or scent can occasionally pose a risk in case of registration of a smell mark, a balance between the use of technology by various Trademark Offices of different countries and founding jurisprudence of Trademark, the lacuna present in process of protection, can sometimes fill this gap.

– Team AMLEGALS assisted by Ms. Ananya Pandey (Intern)

For any query or feedback, please feel free to get in touch with falak.sawlani@amlegals.com or mridusha.guha@amlegals.com