This post is authored by Tejaswini Kaushal, a 3rd-year B.A. LL.B. (Hons.) student, Dr. Ram Manohar Lohiya National Law University, Lucknow
1. Introduction
“If you’re looking for a cheap dupe to a designer perfume, below we’ve got a list of great fragrance twins that are every bit as good as their pricey counterparts…” claimed an article titled “La Rive Perfume Dupes: The Best Fragrance Twins Of Expensive Brands” in a German online magazine, which then conveniently provided the shopping links of the “smell-alike” perfumes on external shopping sites. However, the magazine’s publishing house did not fare well in this matter. The District Court of Hamburg, on January 26, 2023, ruled that their article constituted trademark infringement of the perfume brands.
Meanwhile, closer to home, in the case of Coty Germany GmbH v. Xeryus Retail Private Limited, the Delhi High Court issued a permanent injunction on July 21, 2023, restraining two websites, namely perfumery.co.in and unboxed.in, from selling perfume ‘testers’ bearing the “Calvin Klein” or “cK” trademarks. Additionally, the Court imposed a fine of INR 1 lakh on these websites, to be paid to Coty Germany, the global authorized licensee of Calvin Klein branded perfumes.
While from peripheral vision the two cases may appear similar in terms of their factual circumstances, reasoning, and outcomes, there is a significant distinction in the rationale employed by the respective courts in granting relief. The German Court acknowledged the plaintiff’s olfactory mark, whereas the Delhi High Court refrained from addressing the infringement of the unique scent of the perfume. Instead, it focused solely on the similarity in the branding trademarks of the perfume testers.
Clearly, there is a lack of recognition of olfactory marks in India, and this area remains mired in irregularity and ambiguity despite being widely acknowledged in most IP-friendly nations. This article discusses the fundamental concept of olfactory marks as non-traditional trademarks, explores the major obstacles to their recognition, and finally, suggests potential solutions based on global best practices that India could adopt to incorporate olfactory marks into its regulatory framework.
2. Olfactory Marks: Most Unique, Even Among the ‘Non-Traditional’
Olfactory memory is an underutilized tool for brand association. Smells, with their ability to evoke lucid images, emotions, and memories, can establish a strong product identity and influence consumer attitudes and purchases. A distinctive scent can become a potent way to set a brand apart from competitors. These distinct smells are trademarked as ‘olfactory marks,’ which fall under the broader category of “non-traditional” marks, primarily because they differ from traditional marks like worded or graphical logos.
The Indian legislation governing trademarks, i.e., the Trade Marks (“TM”) Act, 1999, under Section 2(zb), defines a “trademark” as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours […]” This provision implies a relatively narrow and limited scope for the definition and acceptability of marks under the Indian law.
However, in many foreign nations, the term “trademark” is given a more dynamic interpretation, and non-traditional olfactory trademarks have been recognized. For example, the United Kingdom (UK) was among the first to acknowledge smell as an eligible feature for trademark consideration in 1996 when it granted an olfactory mark for the rose-flavored fragrance applied to their tires to Sumitomo Rubber Company (later transferred to ‘Dunlop Tyres.’) In another instance, an olfactory mark was granted to ‘Unicorn Products’ for the bitter beer scent of their darts. In the United States (US), the first such trademark was issued in 1990 for a ‘plumeria blossom scented thread’ used in embroidery. The United States Patent and Trademark Office (“USPTO”) has since successfully registered more olfactory marks, including scents like bubble-gum flavored sandals, combustion engine lubricants with cherry, strawberry, and grape scents, and a strawberry-scented toothbrush. In 2018, the toy company Hasbro received a trademark registration for the distinctive smell of their popular toy ‘Play-Doh.’ Hong Kong’s Trademark Ordinance also permits the registration of smell marks, and its IP department actively encourages such registrations.
3. Smells like Trouble: Restrictive Statutory Requirements for Qualifying as a Trademark
Olfactory marks may initially seem like an innovative way to distinguish goods and services. However, there are four major arguments against their registration as marks:
3.1. Complication in Graphical Representation
Olfactory marks have become a common practice among manufacturers looking to differentiate their products through distinctive scents. However, a significant challenge arises in registering these marks under the TM Act, 1999, requires a ‘trademark’ to be represented “graphically.” This requirement complicates the registration process because a mere description of a scent’s chemical composition is insufficient for adequate graphical representation. Such a description pertains to the substance itself rather than the specific scent. Since the scent alone cannot be trademarked without a necessary connection to a commodity, the scent cannot naturally emanate from the product’s properties. A relevant case in this context from American jurisprudence is Ralf Sieckmann v. Deutsches, where a request for trademark registration for the scent of ‘methyl cinnamate’ was denied due to the failure to meet the graphical representation requirement.
In India, the Indian Draft Manual of Trade Marks, 2015 provides the most definitive guidance regarding the status of non-traditional trademarks since the TM Act, 1999, does not explicitly address them. The Manual follows the standards established in the Ralf case and asserts that: “Consumers of such fragranced goods are unlikely to attribute the origin of the products to a single trader based on the fragrance. Whatever may be the case, for purposes of registration as a trade mark, unless the mark is ‘graphically represented’ it will not be considered to constitute as a trade mark.” Consequently, the Manual straightforwardly rejects the registration of olfactory marks unless they are presented in a manner that meets this graphical representation requirement.
3.2. Non-compliance with the Functionality Doctrine
One of the most significant legal challenges concerning the registration of olfactory marks revolves around the functionality doctrine. According to this doctrine, product features that serve a functional purpose are not eligible for protection under trademark law. While trademark registration provides exclusivity for commercial use, the functionality doctrine aims to prevent monopolies over essential product features that could stifle competition. Applying this doctrine to olfactory marks raises complex issues and potential consequences. For example, iconic fragrance lines like Chanel No. 5, widely used in the fashion industry for decades, could be deemed ineligible for trademark protection under the functionality doctrine. This opens the door for unauthorized copying without legal recourse for the fragrance’s owner.
Furthermore, the functionality doctrine can pose obstacles to trademark registration for scents in other ways. For instance, a pharmaceutical company, ‘Pohl Boskamp,’ sought trademark registration for the flavor and peppermint scent of their nitroglycerin spray used to treat chest pains. However, it was determined during examination that the peppermint flavor had a functional aspect, particularly in treating specific chest conditions, rendering it ineligible for registration.
While the functionality doctrine undoubtedly serves a vital role in trademark law, instances involving olfactory trademarks highlight its restrictive nature and potential hindrance to protecting IP.
3.3. Subjectivity of Scents
Trademarks serve the objective function of indicating a product’s source. However, the human sense of smell is inherently subjective. Some individuals have a more acute sense of smell than others, making it challenging to establish a universally recognized scent as a trademark. The subjective nature of scent perception poses a significant challenge in olfactory mark litigation. The trier of fact’s interpretation of scent evidence can vary widely, leading to unpredictable outcomes in legal cases. This subjectivity affects the reliability of judicial administration and can result in arbitrary rulings.
3.4. Depletion of Desirable Scent Marks
The depletion theory suggests that there is a limited number of sensory devices (e.g., color, scent, or sound marks) that consumers will positively respond to. Granting a trademark monopoly over one of these desirable marks depletes the pool of available marks and harms competition. This theory applies to olfactory marks since there are cross-cultural scent preferences, and granting a scent mark registration for one fragrance depletes the pool of desirable scent marks, reducing competition nationally and internationally.
4. Having a Nose for Recognition: Establishing the Case for Change in India’s IPR Framework
The Ralf Sieckmann v. Deutsches ruling has created a complex situation regarding registering scents under the European Community Mark (“ECM”) system in Europe. While ECM applicants can seek scent registrations, they encounter difficulties due to the absence of clear and accepted methods for describing scent marks in their trademark applications. In contrast, some jurisdictions, like Canada, have no specific laws addressing the registration of scent marks, while others, such as Brazil, China, and Mexico, explicitly forbid scent mark registration. The lack of uniformity in scent mark registrations across jurisdictions may adversely affect national economies. Olfactory marks are exceedingly rare, and it remains uncertain whether they are a passing marketing trend or could become some of the most valuable trademarks in the future.
In India, for a trademark to fulfill its essential functions—protecting the rights of the owner against infringement and guiding consumers to products or services—it must possess qualities of uniqueness, originality, and distinctiveness. The Delhi High Court, in the case of Cadbury India Limited & Ors. v.Neeraj Food Products, emphasized this point. In paragraph 73 of the judgment, the Court highlighted that “The spirit, intendment and purpose of the Trademark legislation is to protection of the trader and consumer against dishonest adoption of another’s well known trademark with the intention of capitalizing on the attached reputation and goodwill or dishonest adoption of a trademark which is deceptively similar to the well known trademark. Certainly any other interpretation of the new Act would run counter to the basic intendment of the law.”
This perspective raises the challenge of granting protection to non-traditional trademarks, including olfactory marks. Following the just and widely accepted rationale articulated by the Delhi High Court, it becomes evident why most applications for registration of non-traditional marks, particularly olfactory marks, have been rejected worldwide. The traditional concept of olfactory marks presents vulnerabilities, primarily due to the high likelihood of trademark infringement through the replication of chemical formulas and verbal descriptions of the scents. This functional aspect, involving the potential for public confusion and the mark’s inability to distinguish the goods it represents, led to the rejection of the Applicant’s mark in the Sieckmann case.
Neglecting olfactory marks in India’s IP protection is not ideal for its booming economy. Extending IP protection to include olfactory marks is essential to ensure a safer environment for creative works and brand identities of both domestic and foreign companies. To better navigate this complex landscape and incorporate olfactory marks into the Indian IP framework, drawing inspiration from global best practices is essential. These practices can serve as a valuable guide for India’s future approach to recognizing and protecting olfactory marks.
5. Carving the Path to a More Fragrant Future
5.1. Addressing the Limitation of Graphical Representation and Subjectivity
Representing scent marks is a complex task that involves various technological and analytical methods. In the Sieckmann case, it became evident that a combination of a chemical formula, verbal description, and a sample container fell short of effectively representing a scent mark. However, recent developments and technologies have offered new possibilities for addressing this challenge.
The sensory assessment approach uses statistical analysis of human senses, such as smell, to evaluate consumer products through analytical, affective, and perception tests. Furthermore, scentography involves the artificial recreation and storage of odors using chemical and electronic means. For instance, the “Madeleine” camera captures and stores smells by creating a “graph-like” formula of the odor, enabling precise odor recreation and scent mark representation. Digital Scent Technology focuses on transmitting and receiving “scent-enabled” digital media, such as web content, video games, and movies. For instance, startups like “FeelReal” have introduced masks for virtual reality that emit different scents, enhancing immersive experiences. Moreover, “Electronic Nose” devices detect and compare odors to a reference database. Another is the “Scent Dome,” also known as “smell sampling by PC,” a peripheral device for computers that generates smell simulations by heating and releasing aromatic oils stored in cartridges, encoded in binary mode, allowing digital control over various scents.
These innovative methods offer promising avenues for gauging and graphically representing scents, potentially facilitating the registration of olfactory marks in India. Leveraging these technological advancements and analytical approaches may address the challenges associated with scent mark representation, ultimately improving the recognition and protection of olfactory marks in IP law.
5.2. Adhering to the Functionality Doctrine
In the context of the functionality doctrine, India can draw valuable insights from the US, where the concept of functionality has been extensively discussed. In the US, there is a significant requirement for evidence to establish that a scent or fragrance can function as a trademark.
To overcome this requirement, applicants must prove two key elements:
- Demonstrating Non-functionality:
A product feature is considered functional if it is essential for the use or purpose of the goods or if it significantly affects the product’s cost or quality. Traditionally, functional features cannot be protected as trademarks, even if there is evidence of secondary meaning. This concept aims to prevent trademark law from stifling competition by allowing trademark owners to control useful product features. Therefore, if an applicant can demonstrate that a scent serves as a source identifier without performing any other significant function, it will likely pass the non-functionality test.
- Establishing Distinctiveness:
A nonfunctional scent mark may be registered on the Principal Register, but only if proof of acquired distinctiveness exists. As previously mentioned, substantial evidence is required to establish the acquired distinctiveness of a scent mark. If an applicant cannot prove that a scent has acquired distinctiveness, it can only be registered on the Supplemental Register. After a scent mark has been on the Supplemental Register for five or more years and additional evidence of acquired distinctiveness has been obtained, the registrant may file a new application for registration on the Principal Register.
A breakthrough case that illustrates these principles is the In re Clarke case (referred to in Part-I). A sewing and embroidery yarn’s trademark registration was denied because it was considered not distinctive enough when compared to similar products. The petitioner contended that their product was unique as the sole scented embroidery yarn in the market, featuring a distinct Plumeria Blossoms scent. The petitioner’s argument was initially rejected as they did not link the scent to the product’s origin and did not specify it on the packaging. However, they won the case after appealing to the Trademark Trial and Appeal Board (“TTAB”). TTAB ruled that a scent can distinguish a product and that the petitioner’s scented yarn, as the only one of its kind in the market, was associated with its origin. Consequently, the TTAB granted trademark registration, stating that a unique scent is prima facie evidence of trademark distinctiveness.
This decision by the TTAB in the Clarke case was later acknowledged by the US Supreme Court in the Qualitex Co. v. Jacobson Products Co. case. The Supreme Court affirmed that scent marks could be affixed to or infused into products, like Plumeria Blossom-scented yarn, or applied as scratch-and-sniff or scented cards. This recognition establishes the eligibility of smell marks for trademark registration in the US, blending judicial decisions and statutory provisions. While American jurisprudence on olfactory marks is still evolving, the USPTO has laid a solid foundation for olfactory mark registration. India could consider adopting a similar approach, formulating guiding principles, and tailoring them to domestic requirements for a more transparent and coherent regulatory framework.
6. Smelling Success: Paving the Way for Olfactory Marks in India
The human sense of smell is powerful, connecting directly with our brain functions, often bypassing conscious thought. Many products are consumed based solely on their aroma, and in the ever-evolving world of marketing, businesses can leverage distinctive scents to associate with their products. When customers identify a unique scent and associate it with a product’s origin, it aligns perfectly with trademark law principles.
It is only logical to assign specific trademarks to these ‘scents.’ Olfactory trademarks have gained significant recognition worldwide, but India lags far behind. Despite successfully registering non-traditional marks like color combinations and sound marks, India has never witnessed the registration of an olfactory mark. The legal framework in India is not particularly favorable for olfactory marks, but it is important to note that the landscape for other non-traditional marks is evolving positively. Although there are challenges in admitting olfactory marks, it is only a matter of time before India aligns itself with international standards and embraces the comprehensive registration of olfactory trademarks. While there are limitations, with the right and judicial intent and the incorporation of technological advancements, there is a feasible path for olfactory marks to gain the recognition they deserve as trademarks.