Olfactory Trademarks in India: Status & Challenges

The Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPS was established in 1995 and applies to 162 members of the World Trade Organisation (WTO). Section 2 of TRIPS defines ‘marks’ and helps member-nations determine what can be trademarked in accordance with the Agreement.

Olfactory trademarks (smell) are non-conventional marks, i.e., a new category that does not belong to a pre-existing conventional category of trademarks. Such marks are traditionally difficult to register and often fall short of the key elements and functionalities required of a conventional trademark.
 

TRIPS on Olfactory Trademarks

Section 2, Article 15 of the Agreement defines ‘Protectable Subject Matter’ as ‘any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.’

• The explanation above does not explicitly include non-conventional marks such as smell, within its ambit; but it does not rule out the same either.
• TRIPS provides recognition to the rights of member-countries allowing it to mandate graphical representation of the trademark under domestic legislation. However, the criteria of ‘graphical representation’ is not clearly defined for non-conventional marks.
• Therefore, while the TRIPS Agreement may widen the scope of registering non-conventional trademarks, it remains ambiguous on the necessary criteria of graphical representation for including non-conventional trademarks and, in turn, olfactory marks.

 

Olfactory Trademarks in India

Section 2(1) (zb) of The Trademarks Act of 1999 (the ‘Act’), defines ‘trademarks’. Non-conventional marks are those that do not fit within the ambit of the definition provided by the Act. Examples of such marks are holograms, sounds, smell, taste, etc. These marks are not confined to symbols, words, name, packaging, device, or combination of colors.

Now, as mentioned above, ‘graphical representation’ is essential for constituting a trademark. Rule 28 of the Trademark Rules 2017 (the ‘Rules’) defines graphical representation as that which can be expressed in both paper and digital form.

A mark can be registered as a trademark under the Act, if it meets the following criteria:

• It is a ‘mark’ under Section 2(1)(m) of the Act.
• It can be graphically represented.
• It can be differentiated from the product of others.
• It should conform to provisions of the Rules.
• Trademark Rules 2002 Rule 28 & 30 require representation on paper, in a durable form. Therefore, this requirement acts as a significant impediment.

The condition of graphical representation has ensured that olfactory marks are difficult to register under Trademark Law in India.
 

Registration of Olfactory Trademarks in India - Challenges

• Difficulty in depicting olfactory marks through graphical representation is the biggest barrier in Indian Trademark Law. It is not possible to represent the ‘smell’ in words or chemical formulae accurately.
• Rule 26 of the Rules ensure that graphical representation of the mark is carried out on the registration form. The mark must be on paper while applying for registration, which is practically impossible for olfactory marks.
• Distinctiveness of a smell is difficult to prove as most smells arise out of the items used to make the product. Thus, establishing uniqueness and distinctiveness is difficult to establish.
• Any feature of a product which is also its functional feature is not eligible for protection under the Doctrine of Functionality. Attempting to establish that the smell/scent of a particular item is not its functional feature may be very difficult to establish.
• It is often argued that human smell is subjective in nature and, thus, it cannot function as a valid trademark.

 

Olfactory Trademarks in USA

In the US, trademarks are governed by the Lanham Act. It embodies the federal trademark law and recognizes conventional marks, i.e., words, name, symbols, devices or any combination of them that indicate the origins of a service or product eligible for protection. Specifically, for olfactory and other non-conventional marks:

• The Act does not explicitly call for protection of trademarks in the form of smells, sounds, and colours.
• Section 45 of the Act defines ‘Trademark’ and does not refer to any information to olfactory/smell marks.
• Recognition may be granted provided they satisfy the criterion of ‘recognizability’ by a majority of the consuming public, despite no explicit mention in statutes.

The landmark precedent of In Re Celia Clark

• In Re Celia Clark, trademark was provided for a 'a high impact, fresh floral fragrance reminiscent of Plumeria blossoms'; these items were threads. The court stated the fragrance of the item was not an inherent factor, i.e., the product was not such for which the smell was essential.
• It passed the both distinctiveness and non-functionality test.
• Despite the absence of statutory conviction, the judiciary in the USA is perhaps the most inclusive and liberal when it comes to the registration and admissibility of non-conventional marks.
• This case was acknowledged in Qualitex Co. v. Jacobson Prods by the U.S. Supreme Court. The court opined that scent marks can be affixed or infused into a product. Therefore, in some cases, their registration may be permissible due to a combination of statutory interpretation and precedent.

 

Conclusion

From the above, it is apparent that the US trademark law, and more so the courts, are far more liberal about registering olfactory trademarks than India. Indian trademark law, currently, does not permit the registration of smell as trademarks and has no precedent for support either, graphical representation during registration being the biggest impediment to the process. Several gaps need to be plugged before it is possible in India. The Indian Trademark law is based on TRIPS, and the absence of an explicit mention of non-conventional (including smell) trademarks in TRIPS makes it difficult for India to incorporate the same. Time will tell if olfactory marks evolve enough to demand protection in India. As of now, though, they cannot be registered under Indian law.