The ever-increasing competition in the business sector forces organisations and enterprises to distinguish themselves and attract a broader customer base. They use trademarks as their primary means of operation, in addition to significant investments in advertising and appealing offers.

A trademark is a symbol of quality that certifies that the goods/products in question came from a specific source. The more distinctive and well-known a brand is, the more likely it is to attract customers.

The Trademark Act of 1999, Section 2 (1)(m), refers to the term “mark.” It denotes which marks are protected by trademarks—moving on to Section 2 (1) (zb) of the Trademark Act, 1999, which explains what a Brand/Trademark is based on its portrayal in pictorial form. Regarding non-traditional trademarks and their registrability, Article 15 of the TRIPS Agreement from 1995 states that marks like sound, aroma, and shape can be registered.

If we look at various international treaties, we can see that they have discussed non-traditional trademarks in a broad sense, and as a result, the relevance of these types of marks has grown. Smell Marks can be linked to food, chemicals, or perfumes. And it was established for the first time in the United States in the case of RE Celia in 1990 that smell marks are recognised trademarks. The WPO has issued recommendations on the subject and stated that it is possible to register when it comes to registration.

When it comes to the protection provided to non-traditional marks in the United States and India, the two countries have opposing viewpoints. Such marks are protected in the United States by the Lanham Act of 1946, and in India, it is governed under the Trademark Act of 1999.

The beginning of an era: Unique trademarks, such as smell, sound, and taste marks, have emerged in the trademark regime. While sound markings, such as the Nokia jingle are ubiquitous, smell traces are relatively uncommon.

What is a scent mark?

Smell marks result from a business activity in which producers give their products a distinct fragrance to distinguish them from other products of similar type. However, the problem occurs because a pictorial representation of the smell must be registered as a trademark.

Sumitomo Rubber registered the first smell mark in the United Kingdom for a floral fragrance or smell suggestive of roses when applied to automobile tyres.

Following a petition to the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO), the first US smell trademark was registered in 1990. The trademark was for a “high-impact, fresh, floral aroma reminiscent of Plumeria blossoms” that was used in sewing thread and embroidery yarn.

Since then, only a few smell trademarks have been registered, including bubble gum aroma for sandals and strawberry, cherry, and grape lubricants for combustion engines.

The fact that smell markings are subjectively defined and hence susceptible to interpretation is the fundamental reason for their low registration. Because of the complexities that result from human perceptions of odours, some argue that subjective opinions are insufficient when determining whether a smell mark is a trademark. Furthermore, fragrance trademarks are one of the most difficult to convey graphically.

The Functionality Doctrine and Scent Marks: The concept of functioning doctrine is one of the most severe legal impediments to registering scent marks.

 According to the same, a product’s features that have the nature of being a function of it are not eligible for trademark protection. In this case, for fragrance marks, any genuine trademark registration guarantees the exclusivity of its use for an extended amount of time, provided that the usage is in the commercial sphere.

The idea of the functionality doctrine is to prevent one company from having a monopoly over a critical element of a product that could be critical to a competitor’s product line. On the surface, this theory appears to be a tool for encouraging healthy competition. However, when it comes to smell markers, the application of this idea proves to be tricky, and it raises questions about the doctrine’s essence and opens the door to implications.

Chanel’s world-famous and acclaimed fragrance line, ‘Chanel No. 5’, which the fashion industry has widely used for decades, is an excellent illustration of this difficulty. Olfactory marks from beauty or self-care items, such as cologne or perfume, are now ineligible for trademark registration due to their compliance with the functionality concept. Assume that a scent brand as well-known as Chanel No. 5 is not protected under trademark law is absurd. It enables the possibility of the iconic smell being duplicated without the commodity owner having any legal redress.

What is the law on trademarks in India?

The Indian Trademarks Act 1999 defines a trademark as a mark capable of being graphically expressed and capable of identifying one person’s goods or services from those of others. A mark is also defined as a device, a trademark, a heading, a label, a ticket, a name, a signature, a phrase, a letter, a numeral, the shape of goods, packaging, a colour combination, or a combination any combination thereof.

Moreover, an application for trademark registration must include a graphical representation in line with Rule 25 (12)(b) of the Trademark Rules, 2002, while Rules 28 and 30 require that it be rendered on paper, in a durable form. As a result, this condition creates a considerable barrier to olfactory markings being recognised as valid trademarks in India.

Conclusion: When it comes to Non-Traditional Trademarks, there are a few roadblocks in the Indian scenario. Smell Marks, in particular, are not widely registered in India due to the limited reach of the Indian regime. Our societal conceptions are slowly altering to meet the changing needs of society, and this will undoubtedly aid the expansion of non-traditional trademarks. In India, the legal notion will also improve in this area.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Authors

  • Title

    Madhura is an intellectual property professional. She also assists in article writing, editing, and proofreading for companies, businesses, start-ups and individuals. Madhura has extensive experience in Biotechnology, Genetic Engineering, Molecular Biology, Immunology, Biochemistry, and Biostatistics. She has graduated from the Department of Microbiology, Savitribai Phule Pune University – one of the premier institutes in the country for studying Life Sciences. She has completed various courses related to I.P. Law from different universities worldwide.

  • Title

    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).