This article has been written by Spriha Smith pursuing a Diploma in Corporate Law & Practice: Transactions, Governance and Disputes course from LawSikho.

This article has been edited and published by Shashwat Kaushik.

Introduction

Trademarks were thought to be intangible assets in earlier times; however, when components like taste and smell are taken into account, the intangibility of trademarks becomes a point of discord. To regulate the source of the goods, to identify one’s own products from others, or to designate the quality of the items are the three grounds mainly used for a trademark. The first cranial nerve (CN I) is our olfactory nerve and also part of our automatic nervous system, which regulates body functions. Our sense of smell is enabled by this nerve. It is the shortest sensory nerve in our body, where it starts in our brain and ends up in the upper, inside part of our nose. Trademark law has always covered patterns, taglines, and other visual representations of goods and services. The extent of intellectual property also changes as the markets have done. Olfactory trademarks, or scents that are used to identify and differentiate goods or services, are quite a fascinating new category. Although olfactory trademarks are acknowledged in certain regions, in India they are still budding.

Download Now

Companies are taking more interest in associating pleasant scents with their products now, as smell is one of the strongest senses in us humans. Individual’s must be able to physically differentiate the product’s aroma and demonstrate that it is indeed different from the product itself in order to be granted registration of a smell mark. For instance, a bottled sample of the scent would spoil with time and not be retained on a trademark register. So the question stands, as to how can a fragrance be visually represented? It is challenging to write down a smell’s chemical formula because it is to represent the substance rather than the smell of that substance. A smell must be depicted in writing with such accuracy that it cannot be mistaken for any other smell. That being so, it is argued that registering a smell trade mark is a very difficult, time-consuming, and uncertain process. The intent of intellectual property laws, though, is to address technological developments to protect the creation of new works of art as well as the economic interests that are typically raised by them. Therefore, copyrights for literacy, artistic, and scientific works, patents for inventions, and trademarks for signs that can be graphically depicted are the main principles provided by intellectual property laws.

Trademark in India: critical aspects of the Trademarks Act, 1999

In India, trademark regulations include key elements. A standard definition is provided under the Trade Marks Act, 1999, to an extent. A trademark is a visual symbol that is used for any goods or services to denote a trade connection between the mark’s owner and the goods or services. To be included under the law-making definition, a trademark must meet the following necessary conditions:

  • It must not lack characteristics that are distinctive.
  • To identify the quality, type, quantity, purpose, and values, or the geographical source of goods or services offered, trademarks must contain indications that are used in commerce.
  • Trademarks cannot have an appearance that is deceiving or confusing to the public.
  • It cannot include or contain things likely to harm the religious sentiments of any section or class of India’s population.
  • Neither defamatory nor any sexually explicit material shall be included in trademarks.
  • Trademarks usually include a phrase, logo, brand, label, name, or an acronym for a name, signature, word, letter, or number, the products’ shape, the packaging, or any colour combination;
  • The mark must be utilized in printed material or in another way that it is visually represented;
  • When referring to things, this use must be upon, in any physical connection to, or in any other way related to the goods; similarly, when referring to services, this use must be as part of any statement on the availability, provision, or the performance of such services.
  • In the course of business, the mark must be used to identify or establish a connection between the goods or services and a party having legal authority to use it, as the possessor or, if applicable, as an authorised user. So that, for the convenience of the person using the mark, they do not need to provide their identity.

The change in non-conventional trademarks

The trademark law in India has been going under continuous change to adapt to the changing marketing strategies and the practice of branding. Smell is perceived by an individual due to the stimulation of the olfactory glands located at the top of the sinus cavity. Odours have the potential to restore a conscious assessment in the brain, but this is not necessary because memory and affective reactions can be directly triggered by smells. For say, smells like clove extract or a marvellous vanilla extract can be located from a distance.

This symbol can be the shape of the goods, how they are packaged, or a combination of colours. It could be stated that formerly, trademarks were just logos, symbols, and taglines. But these days, as times have evolved, they symbolise other things as well, like the textures, motion, ambiance, sounds, smells, shapes, colours, and packaging of the goods or services. They are all now introduced as non-conventional or non-traditional trademarks.

There are different types of non-conventional marks, such as olfactory marks, where smell marks are used when the source of a good can be identified by smell. Then we have the sound marks, the sound, and trademark categories that are expressly acknowledged by the Rules: sound marks and the sound. This has made it possible for businesses to develop additional advantageous strategies for pulling in, enticing, and satisfying customers in a cutthroat market. Holograms, everyone knows about it; there are movies on it too in India. Holograms are utilised to carry out trademark activities for peculiarly identifying the commercial origin of goods or services. Next we have motion marks; these are produced by combing animation techniques and computer software to produce animated logos that draw in clients. Since their significance has only recently increased due to technological advancement, these are rarely registered. Trade dress stands for the general style and appearance of the product’s packaging. Finally, it is simple to represent taste graphically because the goods’ taste can be figured from the written account of the taste, and that we know as taste marks.

But basically, smell cannot be put down in paper form; therefore, it does not represent in graphical form, which is most important in India. Thus, it is difficult to register a smell mark and so no smell trade mark has been registered in India yet.

Olfactory trademarks: the global trade of non-conventional marks

The owner’s claim to a particular smell is known as a smell trademark. Leading to the development of smell marks, manufacturers used scents or odours to distinguish their goods from similar ones. Scent mark is presently subject to the condition that scent be represented visually for its registration. It has to be precise enough to prevent confusion with any other scent if a description of this kind of smell is required. Moreover, the organic smell may not be documented, as it is difficult to describe it all. Olfactory trademarks are distinctive scents that are used to recognise the origin of a good or service. Olfactory trademarks are appealing to the sense of smell compared to standard trademarks, which are dependent on recognition through either sight or sound. We know examples of a particular fragrance connected to a product, like the distinctive aroma of fruity perfumes, the edible fruit Durian that smells like sewage to some people, and rich Indian spices that almost everyone loves. Some people do not mind the smell of durian, but for others it is unbearable.

Trademarks derived from smells are non-conventional marks, meaning they fall outside of an already-existing conventional trademark category. These marks frequently lack the essential features that are required to qualify as a standard trademark and are traditionally challenging to register. A trademark may be established by a combination of signs or any sign that can be used to separate the goods or services of one business from other businesses. The signs that will be able to be registered as trademarks are names, numbers, colour combinations, and any combination of these signs.

Marks that cannot be trademarked are non-distinctive or generic terms, marks that are already being used, descriptive marks, marks that might cause confusion, deceptive marks, marks opposed to public morality, or similar to existing registered marks. Although it does not specifically include non-conventional marks like smell within its scope, it also does not exclude them. Trade-Related Aspects of Intellectual Property Rights (TRIPS) enables its member countries to require graphical trademark representation in their national laws and acknowledges their rights. The proper definition of the term “graphical representation” is also not distinctly defined in the non-conventional marks. Thus, it is still not specific that in order to include non-conventional trademarks, what kind of graphical representation is required, which in turn includes olfactory marks, even if the TRIPS Agreement may make it easier to register non-conventional trademarks.

Challenges in representing olfactory trademarks in Indian law

Graphical representation:

  • The primary obstacle in Indian trademark law is the difficulty of graphically representing olfactory marks.
  • The “smell” cannot be adequately captured in words or chemical equations, making it challenging to meet the requirement of Rule 26 of the Trademark Rules, which mandates that the mark be graphically represented on the registration form.
  • Olfactory markers mostly have difficulty registering because the mark requires to be on paper.

Distinctiveness:

  • Demonstrating the distinctiveness of a smell is challenging because most smells come from the materials used to make the product.
  • As a result, it is difficult to establish uniqueness and originality, which are essential requirements for trademark registration.

Subjectivity:

  • A common dispute surrounding olfactory trademarks is that human scents are not objective or neutral.
  • This subjectivity raises concerns about the enforceability of such trademarks and the potential for disputes over the similarity or dissimilarity of smells.

Prior use and common scents:

  • Another challenge is the existence of prior use and common scents.
  • Many scents are commonly used in various products and industries, making it difficult for a specific entity to claim exclusive rights over a particular smell.

International considerations:

  • The recognition and protection of olfactory trademarks vary across jurisdictions.
  • Some countries have specific laws and regulations governing olfactory marks, while others do not.
  • This inconsistency creates challenges for businesses seeking international protection for their olfactory trademarks.

Infringement and enforcement:

  • Determining infringement of an olfactory trademark can be complex.
  • Unlike visual or auditory marks, which can be easily compared, assessing the similarity or dissimilarity of smells requires specialised expertise and subjective evaluation.
  • Enforcing olfactory trademarks can also be challenging due to the difficulty in providing concrete evidence of infringement.

Consumer perception and acceptance:

  • The success of an olfactory trademark depends on consumer perception and acceptance.
  • Consumers need to be able to associate the smell with the specific brand or product for the trademark to be effective.
  • Creating this association can be challenging, particularly in markets where olfactory trademarks are not widely recognised or accepted.

Technological advancements:

  • Technological advancements, such as electronic noses and scent-capturing devices, have the potential to facilitate the registration and protection of olfactory trademarks.
  • However, these technologies are still in their early stages of development and may not be widely accessible or affordable for all businesses.

Olfactory trademarks in USA

Olfactory trademarks, also known as scent trademarks or smell trademarks, are a type of trademark that protects the distinctive smell or scent of a product or brand. In the United States, olfactory trademarks are recognised and protected under the Lanham Act, which is the primary federal statute governing trademarks and unfair competition. A number of other companies have successfully registered olfactory trademarks for their products, including:

  • The scent of fresh-cut grass for Scotts Miracle-Gro.
  • The scent of chocolate for Hershey’s.
  • The scent of vanilla for Yankee Candle Company.
  • The scent of coconut for Hawaiian Tropic.
  • The scent of pine needles for Pine-Sol.

To obtain an olfactory trademark in the USA, the applicant must file an application with the United States Patent and Trademark Office (USPTO). The application must include a description of the scent, a sample of the scent, and a statement of how the scent is used in commerce.

The USPTO will then examine the application to ensure that the scent is distinctive and not merely functional. If the USPTO approves the application, the olfactory trademark will be registered and granted a term of protection of 10 years, renewable for additional 10-year periods.

Olfactory trademarks can be a valuable asset for businesses. They can help to create a unique identity for a product or brand, and they can also be used to evoke positive emotions and memories in consumers.

The benefits of olfactory trademarks

The benefits of olfactory trademarks extend far beyond their ability to create a unique identity for a product or brand. They possess the extraordinary capacity to evoke potent emotions and memories within consumers, forging an unbreakable bond between scent and experience. When skilfully implemented, olfactory trademarks transform mere products into cherished symbols, capable of eliciting a wide range of feelings, from nostalgia and comfort to excitement and luxury.

One of the primary advantages of olfactory trademarks is their unparalleled ability to create a unique and enduring identity for a product or brand. In a cluttered marketplace, where countless brands compete for attention, a distinctive scent can serve as a powerful differentiator, setting a product or brand apart from its rivals. When consumers encounter a product with a distinctive scent, they are more likely to remember and recognise it in the future, even if they cannot see it. This heightened recall and recognition can lead to increased sales and brand loyalty.

Moreover, olfactory trademarks possess the remarkable ability to evoke positive emotions and memories in consumers. Certain scents have the power to trigger strong emotional responses, such as happiness, relaxation, or excitement. When a product or brand is associated with a pleasant scent, it can create a positive emotional connection with consumers, making them more likely to purchase the product and develop a lasting affinity for the brand. For example, the familiar and comforting scent of freshly baked bread can evoke feelings of nostalgia and warmth, while the invigorating aroma of citrus fruits can create a sense of energy and vitality. By harnessing the emotional power of scent, olfactory trademarks can create a deeper and more meaningful connection between consumers and products or brands.

Furthermore, olfactory trademarks can be instrumental in creating a more immersive and engaging experience for consumers. Scent has the ability to transport consumers to different places and times, stimulating their imaginations and creating a multisensory experience. When a product or brand is associated with a specific scent, consumers are more likely to engage with it on a deeper level, leading to increased sales and brand loyalty. For instance, the use of natural scents, such as the fresh, earthy aroma of a forest or the salty, briny scent of the ocean, can create a sense of place and adventure, enhancing the overall consumer experience.

If you are considering obtaining an olfactory trademark in the USA, it is important to consult with an experienced trademark attorney. An attorney can help you determine if your scent is eligible for trademark protection and can assist you with the application process.

Conclusion

In conclusion, even though India boosts registration of various kinds and has the Trade Marks Act of 1999, Trade Marks Rules of 2017, and the Draft Manual of Trade Marks Practice and Procedure, there has still been a difficulty in registering non-conventional trade marks. In Indian law, olfactory trademarks are significantly less liberal than under US trademark law. Currently, Indian trademark law does not permit the registration of smells as trademarks and has no precedent for aid. A few gaps must be closed before it can happen in India. It will take time to see if smell markers change sufficiently to permit protection in India. The business needs to have goodwill, and the need for registration of sound, smell, and taste is also increasing. Well, according to the Indian legislation, they are not yet being registered here in India. The Indian laws do not explicitly allow nor prohibit them. For example, in December 2023, the car tyre maker Sumitomo Rubber Industries Limited filed for an olfactory trademark for its flower-scented tyres. The scent is described as a floral fragrance or scent reminiscent of roses as applied to tyres in the application.

References

RELATED ARTICLESMORE FROM AUTHOR

LEAVE A REPLY

Please enter your comment!
Please enter your name here