Smell-Also A Trademark!

Akshaya

Vishakhapatnam: Intellectual property rights, according to the World Trade Organisation are defined as “the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period."

India's obligations under the TRIPS Agreement for the protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, the abolition of compulsory licensing of trademarks, etc.

With the globalization of trade, brand names, trade names, marks, etc. have gained a great value that requires uniform minimum standards of protection and efficient procedures for enforcement as were recognized under the TRIPS. Extensive review and consequential amendment of the old Indian Trade and Merchandise Marks Act, 1958 was carried out as to bring it under the TRIPS and therefore the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent amendments, conforms to the TRIPS and is following the international systems and practices.

The Trade Marks Act (hereinafter “The Act”) has the provisions dealing with the mechanism of registrations and its conditions, procedure and duration of registration, effect of registration, use of trademarks, rectification and correction of the register, collective marks, certification of trademarks, provisions for textile goods, and offenses and penalties.

The Act has widened the definition of trademarks, Section 2(zb) of the Act defines:

"trade mark 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 the shape of goods, their packaging, and combination of colors; and

(i) with Chapter XII (other than section 107), a registered trade mark or a mark used concerning goods or services to indicate or to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as the proprietor to use the mark; and

(ii) about other provisions of this Act, a mark used or proposed to be used to goods or services to indicate or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person and includes a certification trade mark or collective mark;"

A ‘mark’ is further defined in section 2(1)(m)

“‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof”.

While this is an inclusive definition, the Draft Manual clarifies that certain categories of marks, such as shapes, colors, sounds and smells, “will require special consideration”.

Essential conditions for trademark registration:

1.Should be capable of being represented graphically

2.Should have a distinctive character, capable of being distinguished

Non-Conventional Trademarks

A non-conventional or non-traditional trademark is a class of trademark which does not belong to any pre-existing or conventional trademark category. Non-conventional trademarks are often difficult to register but do fulfill the essential trademark function of uniquely identifying the products or service.

Traditionally, the trademarks were confined to the graphical representation which included specific logos, designs and was registered as trademarks. With the increasing awareness and digitalization, the need for trademarks that are not conventional is coming up.

The non-conventional trademarks have the basic aspect that they are not visually perceptible but rather, can be registered as a trademark as a result of a certain dimension of distinguishing proof required from the consumers' point of view.

These trademarks have the nature to be registered as a trademark and are yet hard to register as a result of their unusual nature. In recent times, the registering authorities have come up with numerous difficulties because of the quantity of the non-conventional trademarks brought before them for registration. This rise in the registration of the non-conventional trademarks can be taken as a consequence of a non- concrete and an incomplete definition of a trade mark. The definition of trademark given under the Trade Marks Act is inclusive and simply illustrative.

With the advent of new technologies as well as marketing and advertising strategies, different types of non-conventional trademarks have developed. With a global perspective, the following are the main non-conventional trademarks that can be registered:

1.Sound marks;

2.Smell marks;

3.Taste marks;

4.Touch marks;

5.Motion marks;

6.Hologram marks;

7.Shape marks.

Position of Smell Trademark in International Jurisdiction

Position in the United States

Smell mark is also known as a scent or olfactory marks. The smell is theoretically protected as a trademark. Recognition to the smell mark was given for the first time by the United States in the case of In Re Celia Clarke, wherein the application for registering the written description of the smell of an "a high impact, fresh floral fragrance reminiscent of Plumeria Blossoms" for sewing thread and embroidery yam was accepted as a graphical representation and granted trademark. It was given because sewing thread was not naturally known to be scented and it was given a distinctive smell in this case.

A famous example of smell trademark being registered in the United States is of Play-Dohh. The toy manufacturer company Hasbro was given the smell trademark of its product Play-Dohh. The smell was described as “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough”. With the registration, Hasbro has prevented its competitors from bringing in toys with a similar scent.

Hasbro with the registration of the smell trademark became the 13th company in the United States to have successfully registered a smell trademark with the US Patent and Trademark Office, which shows that the U.S. has an accepting view of registering Smell Trademarks.

Position in the European Union

The registration of smell Trade mark, although is theoretically possible in the European Union, it has been difficult to do so. A Trade mark is protected throughout the EU by registering the mark as a “Community trade mark” also known as CTM with the Office for Harmonization in the Internal Market.

Article 2 of the European Trade Marks Directive and Article 4 of the Community Trade Mark Regulation states the provisions which allow for the registration of signs, not limited to works, as long as they can be “graphically represented” and are “capable of being distinguished”.

The issue of the smell mark being “graphically represented” was addressed by the European Court of Justice in the case Ralf Sieckmann vs Deutsches Patent- und Markenant. The ECJ held that 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 would be eligible for registration. The ECJ rejected the application in this case as it did not fulfill the criteria of graphical representation.

In the application of John Lewis of Hungerford Limited, the Trade mark was graphically represented by the description that “the trade mark comprises of the smell, aroma or essence of cinnamon” in respect of furniture. The said application was refused on the grounds that the description lacked clarity and precision.

In the case of Venootschap Firma Senta Aromatic Marketing’s Application a written description of “smell of fresh cut grass” was accepted for tennis balls. The EU relies heavily on the Ralf Sieckmann judgement for the determination of the smell Trade marks.

The smell Trade mark registered in the Venootschap case lapsed in December 2006 and since then there has been no Community smell Trade marks in the EU.

Position of Smell Trade Marks in Indian Jurisdiction

Section 2(i)(zb) of Trademarks Act, 1999 defines trademark as “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.”According to Rule 25(12)(b) of the Trademark Act, 1999, graphical representation means that the said trademark should be capable of being represented on paper. Thus, physical representation of the mark is an essential for registration of a mark under the Trade Marks Act, 1999. The other essential of the trademark is that it should be distinguishable, the distinctiveness of the trademark is sine qua non is it to be registerable. Section 9 of the Trade Marks Act, 1999 provides that “a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.”

In case of Smell Trademarks, India also follows same position as US and EU for registration of smell as a trademark. The sine qua non of graphical representation is a great hurdle for registration of smell marks according to the Trade Marks Act, 1999 since it is very hard to represent a particular smell on paper. It is necessary to remove the element of graphical representation of smell trademarks and devise a new method to prove it distinctiveness for more smell marks to be registered. Although India is not yet granting trademarks to smell marks due to impracticability of proving its distinctiveness, it is becoming necessary owing to globalisation and technological advancements. Thus, necessary changes need to be brought in for registration of smell trademarks to become more practicable and cost effective.

Legislations referred:

1.Trade Marks Act, 1999

2.European Trade Marks Directive

3.Community Trade Mark Regulation

4.TRIPS

5.Trade mark Practice Manual, European Union

Web-sources referred:

1.www.manupatra.com

2.www.scconline.com

3.www.indialawjournal.com

4.www.legislation.gov.uk

5.www.worldtrademarkreview.com

6.www.washingtonpost.com

7.https://ipindiaonline.gov.in/eregister/ereg_top.htm

(Writer is a Law Honors Student of Damodaram Sanjivayya National Law University, Visakhapatnam)