Brand owners around the world are educating consumers to associate nontraditional marks with the origins of products and services. With the increasing number of registered nontraditional visual marks (colors and three-dimensional shapes), trademark owners continue to expand the scope of protection to encompass non-visual marks (such as scents and sounds).
Both the courts and the legislation balance trademark protection with public policy to define what signs act as trademarks, in practice, without hindering economic growth. Where society and public policy agree that a sign acts as an indicator of origin (the primary function of a trademark) or an indicator of quality, the nontraditional mark will more likely be accepted as a protectable trademark under relevant law.
This article focuses on the treatment of scent marks in various jurisdictions.
Scent marks are more problematic than visual trademarks as they are defined subjectively and are therefore open to interpretation. The complications that arise from human perceptions of odors lead to the argument that subjective views are inadequate when determining whether the scent mark functions as a trademark. In relation to a successful registration, scent marks are arguably one of the most difficult types to represent graphically (and some trademark offices have questioned the ability of these “marks” to be represented graphically).
In some cases, consumers may associate a scent with a particular manufacturer or trademark owner. Taking into account the subjective nature of human perception and the potentially arbitrary nature of scents, another consideration for brand owners thinking about using scents as trademarks is that the scent on a product may alienate consumers if they consider the scent unappealing.
A trademark can be protected throughout the EU by registering the mark as a Community trade mark (CTM) with the Office for Harmonization in the Internal Market (OHIM). Article 2 of the European Trademarks Directive (TMD) (Directive 2008/95/EC) and Article 4 of the Community Trade Mark Regulation (CTMR) (Regulation (EC) No. 207/2009) allow for the registration of signs, not limited to words and graphics, as long as they can be “represented graphically” and are “capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
The main hurdle that scents need to cross is graphical representation. This issue was addressed by the European Court of Justice in Ralf Sieckmann v. Deutsches Patent- und Markenamt
(Case C-273/00,  ECR I-11737 (ECJ Dec. 12, 2002)). If the sign can be graphically represented “by means of images, lines or characters” in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way, the sign may be eligible for registration. The ECJ ruled that the ways in which the applicant represented the scent mark—which included an odor sample, a description and the chemical formula—did not meet the criteria for graphical representation. It held that a chemical formula merely represents the substance rather than the scent (see “Smell, Sound and Taste—Getting a Sense of Non-Traditional Marks,” WIPO Magazine, Feb. 2009, at 5) and does not satisfy the criteria that a written description must be so precise that it would not permit confusion.
Another requirement is that the distinctiveness of a scent mark, as with any trademark, must not resulting from the nature of the goods themselves. In the United Kingdom, the application to register the scent of Chanel No. 5 perfume was rejected in 1994, as it was the essence of the product (WIPO Magazine, see note above, 2009). Interestingly, in regard to the distinctiveness of scents, it has been argued that natural scents should be registrable in certain circumstances even if, on their own, they lack sufficient distinctiveness for registration. Common scents that have been accepted by OHIM include the written descriptions of “the smell of fresh cut grass” for tennis balls (Vennootschap onder Firma Senta Aromatic Marketing, CTM Application No. 428870, filed Dec. 11, 1996, registered Oct. 11, 2000) and “the scent or smell of raspberries” for engine fuels. Myles Limited’s Application, Appeal No. R0711/1999-3 (OHIM Third Board of Appeal, Dec. 5, 2001) (the application was rejected on the ground that the mark was not distinctive in relation to the goods).
Applicants in the United Kingdom have applied for the registration of artificial, common scents such as “the strong scent of bitter beer applied to flights for darts” (Reg. No. 2000234), for flights for darts in Class 28, and “a floral fragrance/scent reminiscent of roses as applied to tyres” (Reg. No. 2001416), for tires for vehicle wheels in Class 12. Interestingly, both of these applications were filed on the same day, October 31, 1994, and the scent marks are still registered.
The EU has been heavily influenced by the Sieckmann
graphical representation standards. In practice, this landmark decision has almost closed the doors for scent marks in the EU. In fact, there is not a single Community scent mark on the register today, as the mark “the smell of fresh cut grass” lapsed in December 2006 as a result of non-renewal.
Scent marks are registrable as long as the “word, name, symbol, or device, or any combination thereof” is used in trade to identify and distinguish goods or services and to indicate source. The requirements for registering a mark consisting solely of a scent or sound no longer mandate an accompanying drawing. Instead, a detailed written description of the non-visual mark must be provided. This has made it easier to seek the registration of such marks.
A scent may not be functional or natural to the goods. According to Jay M. Burgett (“Hmm…What’s That Smell? Scent Trademarks—A United States Perspective
,” INTA Bulletin
, Vol. 64, No. 5, March 1, 2009), “scents are capable of functioning as source identifiers”; however, “[t]he difficulty…is capturing the point at which a scent functions as a trademark.” In 1990, the Trademark Trial and Appeal Board held that a scent reminiscent of Plumeria blossoms could be registered for “sewing thread and embroidery yarn.” (In re Clarke
, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990).) This scent mark had acquired distinctiveness through use, and this case led to the U.S. Patent and Trademark Office’s accepting that scents can function as trademarks. In Clarke
, the issue of whether a scent mark is distinctive because it is unique in nature or unique to the market was addressed; the USPTO’s standard is that “[t]he amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” (Trademark Manual of Examining Procedure § 1202.13.)
Where the mark is not functional but has yet to acquire the requisite distinctiveness, the mark will be registered only on the Supplemental Register. As of January 2011, there were two scent mark applications pending at the USPTO; since Clarke
was decided, only one scent mark has been registered on the Principal Register. Successful scent registrations are more common on the Supplemental Register, with marks such as lavender (Reg. No. 3140693) and vanilla (Reg. No. 3143735), each for office supplies in Class 16.
Nonetheless, the United States adopts a broader approach than other jurisdictions.
The pending amendments to the Intellectual Property Law will extend coverage to nontraditional marks such as scents, single colors and sounds. However, the amendments state that the Trademark Office “will choose the appropriate time” to accept such marks as capable of being registered. (Peter Ollier, “China’s Challenges Explained,” Managing Intellectual Property, May 25, 2010.) Rules and guidelines will be developed to govern the registrability of these marks.
Scent marks are capable of being registered under Section 17 of the Trade Marks Act 1995. Section 17 provides that a trademark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” Section 6 expressly states that scents may be registrable as a sign, while Section 40 stipulates that a mark must be graphically represented to be registrable. A representation of the mark must be included in the application (Section 27(3)(a)) “by way of a concise, written description of the scent and how it will be applied. As the Act explicitly states that a scent is capable of registration, one would think that there would be more successful applications. In practice, only one such mark has been successfully registered—“eucalyptus scent,” for golf tees in Class 28 (Reg. No. 1241420, filed 2008).
The Intellectual Property Corporation of Malaysia has decided to follow other jurisdictions in expanding the scope of protection to nontraditional marks. The Trademark Act of 1976 has been amended through the years in order to keep up with the evolution of trademarks and international changes (Trade Marks (Amendment) Acts 1994, 2000 and 2002). As a result, Malaysia has made a commitment to adopt many nontraditional marks, including scent, sound, shape and texture, as registered trademarks.
In Mexico, at present, scent marks are not capable of being registered as trademarks. Article 88 of the Mexican Law of Industrial Property states that “any visible sign that distinguishes products or services from others of the same type of class on the market” is capable of being registered as a trademark. The nature of the signs that are capable of being registered as trademarks is set out in Article 89 (namely visible words, names, designs and three-dimensional shapes). Scent marks are not expressly permitted by the legislation, nor are they visible signs.
As Professor Maniatis observes, “perhaps it is better for people to avoid trade marking scents, and, instead, let the scent of the rose fulfil its superb function, irrespective of its name, even when it can indicate origin.” Spyros Maniatis, “Scents as Trademarks: Propertisation of Scents and Olfactory Poverty,” Law and the Senses: Sensational Jurisprudence
231 (Lionel Bently & Leo Flynn, eds., 1996).) This view illustrates that even though scent marks are capable of registration, some people believe that they do not necessarily belong on the register. This is due in part to the risk of confusion that the average consumer is likely to encounter when expected to identify a scent as a badge of origin, and the extremely strong evidence of recognition required.
Practically speaking, the future of scent marks may rely heavily on the ability to supply a precise graphical representation for a scent. While scents do have the ability to convey information through our olfactory system, the subjective interpretation of scents makes it less likely for them to achieve the status of trademarks. While scent marks generate much attention, at this time they are uncommon. If a widely accepted identification system were introduced (like the Pantone system for colors), scent mark registrations might become a more common occurrence.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association