Fashion Law Journal
There is ever-increasing competition in the business and corporation world to be as distinct as possible. They try every conventional and non-conventional way so as to succeed in their endeavour. Trademark as we all know is to establish the uniqueness of a product. But there are other trademarks that are visually perceptible but at the same time can be recognised by other sensory stimulation. According to WIPO, a trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Thus from the definition, it is clear that a sign as an indicator of the required good or service must be distinctive so as to identify it as belonging to a specific person or enterprise. While generally, these signs are in the form of letters or symbols arranged in a specific pattern, a trademark can also be a non-conventional one in the quite non-visual sense that it could also include a shape, sound or smell as well.
On the whole, smell trademarking comes under the non-conventional and non-traditional kind of trademark. In India, a trademark is governed under the Trademark Act,1999 and defines ‘mark’ under section 2(1)(m): “ ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” Recently, the 2017 amendment of the Act recognised sound trademark. The procedure involves trademarking the graphical notations of the sound. On the other hand, the smell cannot be trademarked due to the lack of graphical representation. Another reason a specific kind of smell cannot be trademarked is because of its oxidizing property. The chemical reaction of the gas (the smell is apparently in the gaseous state) with other gases can change the whole chemical composition leading to the formation of a whole another smell. Another reason why it is hard to trademark smell is that the description of the smell can be ambiguous and can be restricted to the limited number of adjectives we have for smell, e.g., floral, fruity, etc. The strict standards of a non-conventional trademark can be traced from the landmark case of Ralf Sieckmann V. Deutsches Patent und Maeknamt which was implemented in the Indian Draft Manual of Trademarks (2015) (not in force of law). In Sieckmann’s case, the scent of “methyl cinnamate” which the applicant described as “balsamically fruity with a slight hint of cinnamon”. The European Court of Justice ruled that (a) a chemical formula stated only the substance and not the odour of the substance and was sufficiently clear, precise and not intelligible; (b) a written description was not sufficiently clear, precise and objective; and (c) a physical deposit of the sample scent did not constitute a graphic representation and was not sufficiently stable or durable.
But in other countries, registration of non-conventional trademarks is a bit more relaxed. The EU Trademark Directives which came into force in January 2019 have amended their requirements for registration of the non-conventional trademark. The requirement is that the trademark need not be in the graphical notation, and the sign must be capable enough of being represented in a manner to create sufficient clarity that the mark is protected.
Although a smell or a scent cannot be trademarked in India, the slogan or anything describing the smell of a product can be trademarked, e.g. Victoria Secret’s “Pure Seduction” fragrance mist describes a certain brand’s product and this can be trademarked. Slogans are protected under Trademarks Act under sections 2(m) and 2(zb). Other than that the uniqueness of the perfume bottle contributes to its characteristics which can be protected under the Designs Act, e.g., Carolina Herrera’s Good Girl Eau De Parfum.
The making of Perfumes undergoes a lot of development processes such as choosing from a wide variety of elements that appeal to the olfactory senses. This indeed is a tedious process and involves skill, labour, and knowledge that goes into the production of making such substances. Copyright would preserve the artistic character and design of the product. This becomes necessary for makers of perfumes at the end of the day what distinguishes the product is not its process but its smell. Indian Law is silent on this topic.
It is a fact that the way products smell can be a huge determining factor of a product. With Trademark Law in India, which is modelled from the TRIPS agreement, should recognize olfactory marks as the competition in India is rising. According to Ministry of Small, Micro and Medium Enterprises,Global fragrance & flavour industry is worth $24.10 Billion and India contributes approximately $500 million. However, growth rate in India is approximately 11% in the last few years but is projected to grow exponentially in the upcoming years due to rising personal care, brand awareness, increasing disposable income, growing demand in middle class people and affordable price of fragrance in the form of mass perfumes & deodorants. If trademarking of scent becomes a reality, there will be more flow of money. Not only does this help the economy but also people who rely on their olfactory senses for survival, blind can definitely distinguish a brand from another just by the smell of it.
