Short remarks on what is registrable as a trademark...
Theoretically, the European Union Office for Harmonisation for the Internal
Market (OHIM) recognises that scent marks are eligible for trade mark
registration. However, in practice a contradictory position exists; there is no
bar to filing an application for a scent mark, but at the same time, there are
no acceptable methods or techniques for describing such scents. The 2002
decision “Sieckmann” of the European Court of Justice (ECJ) essentially
concerned the question of what is an acceptable representation of an olfactory
trade mark. The ECJ held that “a trademark may consist of a sign which is not
in itself capable of being perceived visually, as long as it can be presented
graphically by means of images, lines or characters and that the representation
is clear, precise, self-contained, easily accessible, intelligible, durable and
objective”.
As a result of the Sieckmann decision
(December 12, 2002), it has and will continue to be very difficult, perhaps
impossible, to register scents regardless of whether they are intelligible to
the majority of the public and capable of depiction in the form of a written
description.
As marketing techniques continue to develop and technology further enhances
ways to recreate and infuse odours, there is a possibility that we will see an
increase in interest towards scent marks.
To simplify, a trademark is a word, symbol or other signifier used to
distinguish a good or service produced by one firm from the goods and services
of other firms. Accordingly Article 15(1) of TRIPS agreement provides that any
sign, or combination of signs, capable of distinguishing goods and services
from those of others, is eligible for trademark protection. Article 4 of the
Community Trademark defines trademark as, ‘any sign capable of being
represented graphically2’, which is capable of distinguishing goods and
services of one undertaking from those of other undertakings.
Thus the common function of the trademark law has been to afford rights to
those who use words, names, symbols or devices to identify their goods or
services. However in the recent past there have been numerous attempts to
extend this trademark protection
Over the past few decades it is established that traders and brand owners
look out for new and stirring ways to make their products more distinctive than
those of their competitors. As a result the generally and readily perceived
marks such as words, designs, logos, acronyms and slogans, which form part of
standard or traditional form of marks, are no longer preferred by brand owners
and the desire to register non-standard marks such as shape, colour, taste,
smell and sound is noticeably increasing.
Article 4 of the Regulation defines trademark as, “any sign capable of being
represented graphically, particularly words, including personal names, designs,
letters, numerals, the shape of goods or of their packaging, provided that such
signs are capable of distinguishing the goods or services of one undertaking
from those of other undertakings”. The explanatory memorandum to the EC
Harmonisation Directive also made it plain that a trademark could comprise any
sign which performed the basic function of distinguishing the goods and
services of one business from those of another.
Shortly, the smell of freshly cut grass for tennis balls was registered in
the European Union (February
11, 1999).
Although theoretically, the European trademark permits registration of
olfactory marks, in practice, the European trademark registries took the
regrssive line in Sieckmann v. Deutsches Patent-und Markenamt.
The Sieckmann case involved the registration of a “balsamically fruity smell
with a slight hint of cinnamon” for services ranging from advertising and
education to medical, agricultural, and scientific services. The application
included representation of the scent by a chemical formula, a description of
the scent, and a sample of the scent. Two questions were referred to the ECJ:
(1) whether a mark which cannot be reproduced visibly can nevertheless be
reproduced with certain aids, and (2) whether the requirement for graphic
representation in Article 2 is met when an odour is reproduced by (a) a
chemical formula, (b) a description, (c) a sample or (d) a combination of these
elements.
The Court held that the list of signs in Article 2 of the Trademark
Directive is not exhaustive and that the provision does not expressly exclude
signs which are not in themselves capable of being perceived visually, such as
odours. Instead, Article 2 must be interpreted as meaning that a trade mark may
consist of a sign which is not in itself capable of being perceived visually,
provided that it can be represented graphically. Turning to the graphic
representation requirement the Court held that graphic representation must
enable the sign to be represented visually, particularly by means of images,
lines or characters, so that it can be precisely identified. In sum, the
Representation must be clear, precise, self-contained, easily accessible,
intelligible, durable and objective.
Accordingly the court observed that in the present case the applicant had
attempted to describe the sign, a scent, by using a chemical formula. The Court
ruled that this did not constitute sufficient representation. Further, the
formula did not represent the odour of a substance, but the substance as such.
It was further held that none of the means the applicant had used satisfied
these criteria. The policy behind this decision was to enable people checking
the trade marks register to be clear about what is registered, given the nature
of the registry. The Sieckmann decision makes it very difficult, if not
impossible, to register a smell as a mark, at least until such time as it can
be demonstrated that technology exists which can identify smells with
sufficient clarity, precision and objectivity.
Further illustrating the barriers to scent mark registration in the E.U., as
well as the E.U.'s arguable opposition to scent mark registrations, the Fourth
Board of Appeals recently rejected a scent mark application with a graphic
representation consisting of a rectangle with various bands of color resulting
from digitized electronic signals emitted from the sense itself. The Board
reasoned as follows: “The coloured matrix filed does
not comply with the graphic representation requirements...as it does not allow
the relevant public to perceive the identity of the sign or to determine the
extent of its protection. It is not sufficient for the sign to be technically
capable of reproduction. The sign must also be
perceived as such by users of the register and it must enable them to obtain
the necessary indications in order to be able to interpret this”./ The Court's
reasoning reveals the European Union's hesitancy to grant property rights in a
scent, and arguably illustrates its opposition to the registration of scent
marks altogether.
Two important arguments against affording trademark protection to
fragrances.
In order for a fragrance to function as a trademark before a sale is made,
two conditions must be satisfied. First, consumers must have access to a
product's scent before they purchase the product; only if this is true can the
scent indicate origin and thereby influence the decision to purchase. If the
consumer must wait until the product is put to use at home in order to smell
its scent, the opportunity for scent to function as a trademark at the point of
sale is lost. Second, the consumer must not only be able to recognize a
product's scent as familiar, but he or she must also be able to link the scent
with the identity of the product (or manufacturer) on a reliable basis.
Even if a product's fragrance functions as an origin-identifier, the
manufacturer seeking to protect that mark from infringement must be able to
demonstrate that similar scents will create a likelihood of confusion. It is a
fact that fragrance is composed from a spectrum of primary elements that can be
blended into a vast number of combinations: similar fragrance blends can be
difficult to distinguish without expert assistance.
On the other hand it can be asserted that product scents merit trademark
protection. The role of fragrance in many of today's products highlights the
function of a product's smell not only to sell but also to distinguish. A
strong relationship exists between scent and human memory, which makes scents
effective trademarks (see the smell of fresh cut grass).
Whenever people think they are recalling odors, they are actually thinking
of some object associated with an odor. It has also been revealed that once
humans have made one association with a scent, it is difficult for them to
replace the association with another one.
Sieckmann test cannot be ignored and the policy behind the decision has been
to enable people to check the trademark register and to be clear about what is
registered. However from the perspective of European harmonisation the approach
adopted in Sieckmann case looks problematic because it interferes with the
freedom of member states to determine questions of trademark procedure. Such
interference is contentious because the objective of the directive intended to
leave member states free to fix the provisions of the procedure concerning the
registration, the revocation and invalidity of trademarks. It is still being
debated that Sieckmann criteria rests on unarticulated and problematic
assumptions. Concerns have also been raised on the role that bureaucratic
requirements of registering intellectual property rights play in shaping
intellectual property law and policy.
A trademark's objective is to trigger the source of a product in a
consumer's mind.
Companies that add fragrances to products report the scent to be an
important indicator of the product's identity. Researchers in France have found
that customers stayed longer and spent more in a restaurant infused with the
scent of lavender, concluding that scents could influence even consumption
environments. Since scents are being used as a marketing tool it is argued that
the protection should be extended as well.
