Scents of Distinction: Tracing the Identity of Smell in Trademarks

Smell trademarks, also called olfactory marks, are a unique and less common form of intellectual property. They protect specific scents that are strongly linked to a brand, helping people recognize it through smell.

Scents can trigger emotions, bring back memories, and build a strong connection with customers. This makes them a valuable tool for brands aiming to create a deeper, multi-sensory experience.

Olfactory marks can be categorized into three types based on the nature of the products they are associated with –

Key Criteria for Registering an Olfactory Mark

• Must be unique and identify the product’s source.
• Should not be a common or natural smell.
• Must be non-functional (not essential to the product).
• A precise description of the smell is required.
• Must be used consistently in commerce.

Benefits of Registering Olfactory Marks

Olfactory Mark Recognition: Countries That Do and Don’t

• Countries Allowing Olfactory Marks Registration: United States of America (USA), United Kingdom (UK), European Union (EU), Canada, South Korea, Australia, New Zealand
• Countries That Don’t Allow olfactory Marks Registration Yet: India, China, Mexico, Japan

Olfactory Marks Registration Challenges in India

Sections 2(1)(zb) and 2(1)(m) of the Trademarks Act, 1999 allow trademarks to include shapes, packaging, and color combinations if they can be shown clearly and help identify a product or service. For registration, the mark must be shown on paper in a clear and lasting way, especially for non-traditional marks like colors, sounds, and smells.

1. Graphically representation of olfactory marks.
2. The smell cannot be expressed in words or formulas, making it hard to meet Rule 26, which requires graphical representation on the registration form.
3. Lack of global standards for categorizing scents adds to the difficulty, unlike colors or sounds which have codes and notations.
4. A smell must not come naturally from the product; it should be unique to the brand. Most products already have pleasant scents, making it hard to prove uniqueness.
5. Since smells are often not experienced before purchase, they are difficult to associate with a brand and hard to use as evidence, making them challenging to register as trademarks.
6. Human perception of smell is subjective, making it difficult for smells to be recognized as valid trademarks.

In India, a trademark must be unique, original, and distinctive to protect owners and guide consumers. The Delhi High Court, in the Cadbury India Ltd. v. Neeraj Food Products case, stressed that trademarks must prevent misuse of well-known marks. This makes it difficult to register non-traditional marks like smells, as they are hard to define, easy to replicate, and may not clearly identify a product.

Olfactory Marks Registration in Other Countries

The Paris Convention allows each country to decide whether to protect unconventional trademarks like smells. While the TRIPS Agreement seems to exclude odor marks at first glance, Article 15 suggests they can be protected if they are distinctive, can be perceived, and are graphically represented.

United States of America: In the US, trademarks are governed by the Lanham Act, which covers conventional marks like words, names, and symbols. While it doesn’t specifically mention smell, sound, or color marks, these may still be recognized if they are distinct and recognizable by the public, according to Section 45 of the Act.

To obtain an olfactory mark in USA –

• The applicant must file with the USPTO, providing a description of the scent, a sample, and its use in commerce.
• The USPTO will review the application for distinctiveness. If approved, the mark is registered for 10 years and can be renewed for another 10 years.

In In Re Celia Clark, a trademark was granted for a floral fragrance on threads, as it passed the distinctiveness and non-functionality tests. While there’s no law specifically for scent marks, the U.S. judiciary is open to non-conventional marks. This case was later recognized in Qualitex Co. v. Jacobson Prods, where the U.S. Supreme Court allowed the possibility of scent mark registration.

Celia Clark – Olfactory mark

United Kingdom: The Trade Marks Act of 1994 governs trademarks in the UK. It defines a trademark as any sign that can be graphically represented and distinguishes goods or services. There is no separate regulation for non-traditional trademarks like scents.

Case study:

1. Chanel: In 1994, Chanel attempted to register the fragrance of ‘Chanel No 5’ as an olfactory trademark, describing it with specific notes like aldehydes, bergamot, and jasmine. However, the application was rejected because the scent was an inherent part of the perfume itself, making it impossible to register as a trademark. This case highlights the current limitation in trademark law for olfactory marks.
2. Sumitomo Rubber Co.: The first smell mark in the UK was registered in 1996 for a rose fragrance on vehicle tires, granted to Sumitomo Rubbers which is then later acquired by Dunlop Tyres.