Mar 5, 20228 min read

Trademark potential of 'smell' and its limitations

This article is written by Harsh Gupta from the School of law, HILSR, Jamia Hamdard. This is an exhaustive article that deals with the question of trademarking non-conventional mark ‘smell’

Introduction

When you think of a trademark, you generally get the notion of some brand, quality, the distinctiveness of product and service. Innovative ideas have no limits and that is why they are innovative to protect their material objects startups, companies, individuals apply for trademarks. Innovation has to lead us to think beyond traditional work ethics. A logo, symbol, design can be protected under trademark, but the question is can ‘smell’ be also protected under trademark and what are the challenges and advantages of trademarking ‘smell’? And we will also deal with the progress of trademark law in protecting these innovative ideas.

A pleasant scent is said to be one of the most powerful sources of human memory, which is why businesses are more interested in pairing their products with pleasant scents. A product's scent must be able to be visually represented, and it must be distinguished from the product itself, to be eligible for registration of a smell mark. A trademark registration would not be able to preserve long-term samples of smell, for example, because they would decay over time. Visually, however, how would one depict a smell? It is important to describe a smell in such a way that it can't be confused with another. As a result, smell trademark registration is a hectic, time-consuming, and unassured part of trademark registration.

Concept of non-conventional trademark

Non-traditional trademarks are those which do not fall within the conventional definition of a trademark. The marks are not limited to words, symbols, names, devices, packaging, or colour combinations, but also include three-dimensional marks, sound marks, motion marks, position marks, hologram marks, slogans, feel marks, smell marks, and taste marks. Many of these non-traditional marks have become widely accepted due to the dynamics concerning trademarks, causing them to be reflected in much inclusive legislation and international treaties such as the Agreement on Trade-Related Aspects of Intellectual Property Rights. Graphic representation of such nontraditional marks, however, is a challenge.

Indian law on non-conventional trademark

The traditional definition of a trademark is a word, logo, or symbol that can be represented graphically as a result of its association with goods or services. According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark is a mark capable of being represented graphically and that is capable of distinguishing one person's goods or services from those of others, including the shape of products and their packaging, and colour combinations.

Nowadays, not only are logos, symbols, and taglines assigned to goods and services, but also sounds, flavours, smells, textures, holograms, motions, shapes, and the ambience of the products or services are associated with them. Therefore, a mark that goes beyond the conventional category of being judged purely by sight is considered non-conventional.

There are no specific provisions in Indian law for non-conventional marks, except for sound marks. According to Rule 26(5) of the Trade Marks Rules, 2017 when an application is made for a sound trademark, it must be reproduced in MP3 Format not greater than 30 seconds with a graphical representation of its notation in MP3 Format. However, it is interesting to note that TRIPS does not contain a provision for non-conventional marks either. As stated in Article 15 of TRIPS, such signs, including personal names, letters, numerals, figurative elements, and combinations of colours can be registered as trademarks. As such, it is clear from Article 15 that only those signs which can be represented are considered trademarks

Types of non-conventional marks

Sound marks

Consumers perceive brands differently depending on how they hear them. As e-media grows, sound plays a big role in identifying a product or service, adding value to a brand.
A sound mark identifies the origin of a product or service uniquely by using the sound itself.

Smell marks

Smell Marks refer to products where the source identifier is a smell.
Since smell marks do not have any representation, it is much more difficult for them to be registered than sound marks.

Hologram mark

Holography involves recording the light scattered from an object in such a way that it appears three-dimensional.
In a nutshell, a hologram is a blend of what happens when you take a photograph and what happens when you look at something in real life.

Motion mark

Companies use motion marks as a marketing strategy to gain more customers by animating an object or logo.
A motion mark is made by using computer programs and software along with animation techniques.

Taste marks

As a written description of the taste of the goods can be used to indicate the taste of the goods, representing taste marks graphically is easier.
However, functionality is still a challenge. The taste of pizza or pasta cannot be trademarked because it inherently performs the function of making the same- i.e. adding flavour to the meal.

Trade dress

An overall look and appearance of a product or packaging, indicating where it originates from to the buyer, is called trade dress.
The visual appeal of Coca Cola bottles is a classic example of a trade dress. The shape of the bottle, the red label, and the red cap all constitute trade dress.

Smell as a non-conventional trademark

Among the five senses, smell affects the human mind differently. The concept of smell is abstract and is often associated with abstract events, such as smelling success or smelling a rat.

Manufacturers define smell marks by giving their products a unique smell or scent that differentiates them from other similar products. A human's sense of smell is one of the most potent senses that can be remembered. However, registration of a smell mark is subject to the requirement that the smell is graphically depicted. It is this condition that causes the registration to be problematic. Such a smell must be described in such a manner as to avoid confusion with any other scent. Furthermore, the smell to be registered must not originate from the product itself.

Scent marks and functionality doctrine

The doctrine of functionality is considered to be one of the most significant legal challenges to the registration of scent marks. Furthermore, features of a product that carry the nature of being a function of it are ineligible for trademark protection. If a trademark registration is legitimate, in this case, scent marks, it ensures its exclusive use for an indefinite period of time, provided the use is commercial. Functionality doctrine seeks to prevent monopolization by an entity over a vital feature of the product that can be crucial for competitive entities. Initially, this doctrine appears to promote healthy competition. However, when applied to scent marks, this doctrine proves to be difficult to apply. The doctrine's essence has therefore been questioned, and ramifications are possible.

It is apt to use an example from the fashion industry to explain this complication--the world-famous and renowned perfume line created by Chanel, Chanel No. 5. The functional doctrine now disqualifies olfactory marks from beauty or self-care products like cologne or perfume from registration as trademarks. The idea that Chanel No. 5 is not protected under trademark law is absurd, to say the least. This opens the possibility of the iconic scent being copied without the commodity owner having any legal recourse. Additionally, there are other ways in which the functionality doctrine impedes the registration of trademarks for scents.

Due to this, the peppermint flavour served a functional purpose, and it was therefore held ineligible to be registered. Functionality doctrine is an essential aspect of trademark law, but these cases involving olfactory trademarking expose how restrictive it can be, posing a hindrance to potential intellectual property protection.

Advantages of scent mark registration

Customers are emotionally connected to scents, making them very effective in boosting sales. The coffee sales at Exxon On The Run convenience stores increased 55% after a new brewing system was featured with coffee scents.
Smelling a space tends to make customers feel better about it. A study found that participants were willing to spend 10-15% more in a scented room than in a non-scented room for every pair of Nike shoes.
People often associate scents with memories and experiences. According to research, 63% of consumers pick one store/brand over another based on the scent it emits.
There is evidence that customers are happier when exposed to pleasant scents, resulting in a 40% improvement in mood.
From the moment your customers walk through your door, your scent sets a lasting first impression that connects on a deeper level with them emotionally. 82% of consumers spend more time in an environment that is pleasantly scented.
It can be beneficial to your business if your product has the right smell. According to a Samsung report, when exposed to smells, shoppers underestimated the time they spend shopping by 26% and spent three times as much time exploring different sections.
You can create a modern ambience with scent, giving your business an updated look and feel, no matter what the state of your space is.
The smell of familiarity can trigger memories and evoke a warm feeling. There is a 100x greater chance of remembering smell than sight, hearing, or touch.
The aroma of pleasant scents can relax, and make your customers feel more confident and ready to purchase. If you are looking for the right scent for your business, a fragrance expert can assist you.
A neutralizing fragrance can help to significantly reduce, neutralize, or eliminate malodorous if your business is affected by malodorous or produces an off-putting smell.

Negative aspects of smell mark registration

A trademark’s role is to serve as an indicator of the origin of goods and services. As a result, the function of a trademark is objective - either the mark indicates a particular source or it does not. However, the human sense of smell is not objective and thus cannot be incorporated into legal systems. Some people have a keener sense of smell than others.
In American trademark law, the doctrine of depletion has been applied to colour trademarks. According to this theory, there are a limited number of sensory devices (such as colour, scent, or sound) that will be perceived favourably by consumers. In granting a trademark monopoly over one of the few desirable marks available, the remaining pool of desirable marks is depleted and competitive pressure is adversely affected.

Challenges in registering a non-conventional trademark

Scent marks for example are the result of business practice entailing the act of giving a certain scent factor to products by manufacturers, giving them a sense of distinctiveness from other products of the same kind. For a scent to be registered as a trademark, it must be represented graphically. The same was held in the infamous case of Ralf Sieckmann v. Deutsches Patent und Markenamt.(2002) In this case, the smell of methyl cinnamate was wanted to be trademarked, but the application was denied because of the lack of graphic representation required by law.

A smell that emanates naturally from the product cannot be an outcome of its properties. As laid out in the Sieckmann case, the Indian Draft Manual of Trademarks, 2015 enumerates the same standards requiring graphical representation, although it is not enforceable as law. Scent marks cannot be registered under the Indian Trademark law as they do not meet the above requirement. A lawsuit filed by a manufacturer of 'Zippo Lighters' in India has pushed the boundaries of trademark registration. However, the court went beyond the limitations of the trademark registration to give the manufacturers protection against potential counterfeiting of the shape, even though the registration was based on the shape of the lighter.

Conclusion

The acceptance of scent marks for trademark registration is uncertain within individual jurisdictions, but a lack of uniformity regarding scent mark registrations might adversely affect national economies. There is considerable ambiguity about whether scent marks will become significant commercial assets in the future since they are currently very limited.

It can be said, therefore, that smell is a significant determinant in a person's life but the lack of graphical representation and A smell mark registration can sometimes be risky due to the random nature of smell or scent, but with a right balance between technology used by different trademark offices of different countries and trademark jurisprudence, a lacuna can be filled in the process of protection of smell marks.