INTRODUCTION
Trademarks are signs used by businesses to distinguish their goods and services from those of others in the market. The main purpose of obtaining a trademark is to distinguish our own goods from that of others, to know the origin of goods and to signify the quality of a particular product.[1]
A trademark is any term, phrase, symbol, design, or combination of those that differentiates the source of a party’s goods or services from those of other parties. Intellectual property rights that are legally protected include trademarks. They are critical in fostering free competition in the market.
Traditionally, trademarks included words, names, symbols, and logos. To capture greater brand value, however, firms are attempting to register non – traditional marks including sounds, fragrances, colours, and product shapes as trademarks due to rising competition.
In the present paper, we will be studying a specific type of non – traditional trademark, which is a smell or scent mark and analyse its potentiality in becoming a valid trademark in India.
WHAT IS A SMELL MARK
The field of Intellectual Property has grown significantly over time, particularly in the field of trademarks, as it has recently undergone a lot of development. However, as goods and technology advance, some non-traditional trademarks enter the market and are ignored by India’s current legal system because of their peculiar nature. An olfactory mark is one such non-conventional trademark.[2]
Smell marks or odour marks refer to pleasant scents that are used to brand products and establish a connection with customers. Smell is the most basic of five senses and it means to “perceive the odour or scent of something through stimuli affecting the olfactory nerves”. This creates images in a person’s mind, which play a significant influence in a consumer’s choice to purchase a product.[3]
A smell mark is a type of trademark where a distinctive fragrance functions as the trademark to identify the source of a product or service. Smell marks are among the most unusual types of trademarks but are protected under trademark law if they are used in a consistent manner to identify the source of a product or service and distinguish it from those of other parties. For a smell to function as a trademark, it must be non-functional, arbitrary, and distinctive. It has to identify the source of a product to consumers and cannot be essential to the product itself. Smell marks are more difficult to register and protect as trademarks compared to words, logos, or product designs. However, if successful, smell marks can be a very memorable way for consumers to identify a brand.
SHOULD SMELL MARKS BE CONSIDERED AS A TRADEMARK? PROS AND CONS
The concept of smell marks is relatively new in India. Registering smell marks as trademarks has some benefits as well as challenges. These are as follows –
Pros:
• Smell marks are distinctive and help build brand identity. A unique smell associated with a product can be memorable for consumers and can sometimes also make consumers feel nostalgic if they can associate that particular smell with a fond memory. This feeling of affinity from the customer is extremely beneficial in retaining customers, strengthening brand image and boosting sales in the long run.
• Smell marks cover the limitation of traditional trademarks that are visual. They cater to the sensory experience of consumers and enhance brand recall.
• Smell marks can indicate the source of a good brand and prevent counterfeiting if the smell is difficult to copy. This can be a useful mechanism against trademark infringement.
Cons:
• Smell marks are difficult to represent visually. There are challenges in describing a smell accurately in words and depicting it in images, which is required for trademark registration.
• Smell marks have limited scope and can only be applied to certain products like perfumes, food items, etc. They cannot be used for a wide range of goods or services.
• There can be issues with determining if a smell mark is distinctive enough to deserve protection and if it is not too generic. Establishing the distinctiveness of a smell mark is difficult.
• Enforcing rights in smell marks and preventing their unauthorized use by competitors is hard. It is complicated to prove infringement of smell marks.
• Cultural differences exist in the perception and interpretation of smells. A smell mark successful in one country may not work in another due to varying associations of smells.
Overall, while smell marks have the potential to be a marketing tool in India, there are still challenges to overcome before they are accepted as a registrable trademark class. The Indian government would need to provide more clarity and guidelines on this issue for businesses exploring smell marks.
POSITION IN INDIA
Section 2 (1) (zb) of The Trademarks Act[4] of 1999 (the ‘Act’), defines ‘trademark’. According to the Act, 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 colours.” In order to constitute a trademark, there are two requirements. Firstly, it must be capable of being represented graphically. Secondly, it must be capable of distinguishing the goods or services of one person from those of others. This definition does not per se exclude smell marks. In fact, the definition makes no reference to smell or any other unconventional mark.[5]
In India, the Trade Marks Act of 1999 does not expressly forbid scent marks. However, due to problems with complying with trademark requirements including distinctiveness, graphical representation, and functioning, they are not frequently registered as trademarks. The registration process is complicated by the requirement for a graphical representation of a smell mark because a simple description of the chemical makeup of the “smell” cannot be accepted as a sufficient graphical representation.[6]
The smell must be explicitly related to the concerned commodity and should give it a sense of uniqueness and distinction to qualify as a trademark. Furthermore, the smell-mark that is ought to be registered, should not be the natural fragrance emerging out of the properties of that commodity. The Indian Draft Manual of Trade Marks, 2015, elaborates the same principles for graphical representation of the mark.[7]
Functionality doctrine:
The functionality doctrine is a rule in trademark law which states that functional product features cannot serve as a trademark.[8] A product feature is deemed functional if it is necessary for the product’s use or purpose, or if it has an impact on the product’s price or quality. This theory seeks to prevent the monopolisation of a certain aspect of a product, which poses a significant obstacle to the registration of a scent mark because it is challenging to demonstrate that a product’s smell is not a functional element.[9] Its hindering impact in protecting potential intellectual property such as scent marks shows the restricting aspect of this doctrine, although it is essential to trademark law in general.[10]
This can be seen in the case of the world – renowned perfume Chanel No. 5, which is not a registered scent mark, leaving it at risk of being copied with no legal recourse available.
VIEWS HELD IN OTHER COUNTRIES
The ability to represent a brand graphically used to be a key consideration in evaluating whether a trademark may be registered in the European Union, per Article 2 of the EU Regulation. The laws of the EU do not expressly prohibit someone from requesting protection for their smell markings, but they must comply with the criterion of graphical representation.
In the landmark case of Ralf Sieckmann v. Deutsches Patent and Markenamt[11], the court stated that a scent/ smell mark can be granted trademark protection provided it fulfils the requirement of graphical representation which is clear, intelligible and self – contained. This requirement was missing in the present case, hence, their trademark application was rejected.[12]
However, with the implementation of a new regulation[13] on the European Union Trade Mark, the requirement of graphical representation was removed.[14] The new rule establishes that a trademark should be capable of representing in any manner that is clear and precise.[15]
In the United States, the scent of a product may be registrable, provided it should be used in a non – functional manner.[16]
Some well – known smell marks registered internationally are:
- The fragrance of plumeria blossoms used for thread, yarn, and sewing machines by Coats[17]
- The scent of fresh-cut grass used for tennis balls by Penn Tennis Balls, a Dutch company.
- A bubble gum scent used for fluid for hydraulic and motor oils by International Flavours & Fragrances
- A tire company Sumitomo Rubber registered for rosy fragrance for the vehicle tires.
Overall, in countries where emphasis on graphical representation is relaxed, marks such as these could be registered.[18]
CONCLUSION AND SUGGESTIONS
The human body’s strongest and most powerful sense is smell, which communicates directly with the brain without any intermediate mental processes. A buyer will often choose to purchase certain goods based solely on how they smell. Markets have the ability to profit from the linkage of a distinctive smell with the product due to the quick advancement in the selling regime. Customers recognising the distinctive scent and determining the product’s origin are directly in compliance with trademark law’s basic principles. So, giving “scents” a unique identifier as a trademark is only appropriate. There are without doubt several restrictions on the same, as has been mentioned above. However, with the right legislative intent and introduction of technological advancements, it is a distinct possibility in the future that potential scent marks get the requisite acknowledgement as a trademark, without any limitations.[19] Alternative methods of descriptions can bring in various unconventional trademarks.[20]
SUGGESTIONS
Some suggestions for the Indian government to consider in making it possible for smell marks a valid form of trademarks are:
- Conduct public consultations on the issue of smell marks to understand the concerns and opinions of businesses, legal experts, and consumers. Their inputs can help shape guidelines that address the interests of all stakeholders.
- Start with a trial period where smell marks are allowed on a limited basis to examine the practical challenges and effectiveness in providing brand identity. Lessons from the trial can then be used to issue more comprehensive guidelines.
- Place certain restrictions on smell marks during the initial phases such as limiting registration to a specific list of products or requiring a minimum period of use before registration. This can help strike a balance between allowing smell marks and addressing concerns. The restrictions can be eased over time as more experience and expertise is gained.
- Issue guidelines for representing smell marks graphically in a uniform and coherent manner. This will make it easier for both businesses and the trademark office to deal with smell mark applications. It will also enable the public to understand and identify registered smell marks.
- Invest in building the capacity of the trademark office to handle smell mark applications and registrations. Hiring experts, training existing staff, and obtaining specialized equipment to represent and identify smell marks will be required.
- Stay up to date with the international perspective and best practices on smell marks to incorporate the learning into the Indian context. Participating in discussions at international forums can also help India take a more active role in shaping global policies on this emerging issue. The US, EU, Australia and New Zealand allow for the registration of smell marks. Examining the procedures and guidelines in these countries may help address the concerns in India and develop an approach suited for the Indian market.
- Make provisions for smell mark litigation by educating the judiciary and ensuring that trademark law covers all aspects of smell marks. It may also help to initially assign smell mark disputes to designated courts that have expertise in such matters.
With careful planning and consideration of all issues, India has the potential to become one of the first countries to develop a comprehensive set of laws and procedures on smell marks. The registration of smell marks can benefit both businesses and consumers by promoting innovation and recognizing an important aspect of brand identity.
In conclusion, smell marks are an unconventional form of trademark that provide an innovative way for brands to differentiate themselves in the market. While there are challenges to overcome, with guidelines and capacity building, smell marks can become an accepted form of trademark in India. The Indian government must work with all stakeholders to develop an approach that balances the interests of businesses, consumers, and the legal system. By doing so, India can become a leader in shaping policies on this emerging issue at both the domestic and international levels.
[1] LEGAL SERVICE INDIA, https://www.legalserviceindia.com/legal/article-2928-olfactory-marks-smell-marks-.html (last visited Mar. 6, 2023).
[2] Nikhil Verma, Olfactory Mark as a non – conventional trademark in India: A Legal Enigma, KHURANA & KHURANA ADVOCATES (Mar. 12, 2023, 9:29 PM), https://www.mondaq.com/india/trademark/1177138/olfactory-mark-is-one-such-non-conventional-trademark-in-india–a-legal-enigma
[3] Ibid
[4] Trade Marks Act, 1999, § 2 (1) (zb), No. 47, Acts of Parliament, 1999 (India).
[5] Dikshita Damodaran, India: Sounds And Smells Trademarks– Pushing The Boundaries Of What Can And Cannot Be Trademarked, UPSCALE LEGAL (Mar. 12, 2023, 9:29 PM), https://www.mondaq.com/india/trademark/1073224/sounds-and-smells-trademarks-pushing-the-boundaries-of-what-can-and-cannot-be-trademarked
[6] Harsh Tripath, Potentiality of Scent as a Trademark and its Limitations, INDAIN REVIEW OF ADVANCED LEGAL RESEARCH (Mar. 12, 2023, 9:30 PM), https://www.iralr.in/post/potentiality-of-scent-as-a-trademark-and-its-limitations
[7] Draft manual of Trademarks, Chapter III, 3.2.4, Pg. 82
[8] CORNELL LAW, https://www.law.cornell.edu/wex/functionality_doctrine_(trademark) (last visited Mar. 9, 2023).
[9] Ananyaa Banerji and Sandhya S. Parimal, Importance and Challenges of Protecting Smell Marks in India, SS RANA & CO ADVOCATES (Mar. 12, 2023, 9:30 PM), https://ssrana.in/articles/importance-and-challenges-of-protecting-smell-mark/#_ftn2.
[10] Supra note 6
[11] Ralf Sieckmann v. Deutsches Patent and Markenamt, Case C-273/00, 12 Dec 2002, European Court of Justice.
[12] Supra note 9
[13] EU 2017/1001
[14] Art 4, European Union Trade Mark
[15] Supra note 15
[16] Ibid
[17] Re Clark, 17 USPQ2d 1238, 1239 – 40 (TTAB 1990)
[18] Ashish Shahji, Smell mark: Can smell be trademarked in India?, ENTER SLICE (Mar. 12, 2023, 9:30 PM), https://enterslice.com/learning/can-smell-mark-be-trademarked-in-india/
[19] Supra note 10
[20] Supra note 12
