N. 15, June - July 2004 
IP & RTD: Articles 

Trademark registration for smells
Alison Firth
Senior lecturer
Queen Mary Intellectual Property Research Institute
 
Trademarks, such as 'Coca-cola' for beverages, 'Intel' for computer products or 'Orange' for mobile telephony are used by commercial entities and consumers for many purposes - indicating source, indicating quality, as a vehicle for advertising. Consumers may 'buy into' the lifestyle suggested by a luxury mark. However, the central trademark function which is legally guaranteed is that of indicating commercial source. In order reliably to designate the source of goods or services, a mark must be capable of distinguishing the goods or services of one undertaking from those of another undertaking.

This function can be legally protected throughout the EU by registering the trademark as a Community trademark with the Office for Harmonisation of the Internal Market (OHIM). The relevant legislation - the Community Trademark Regulation - has its counterpart in the national laws of EU Member States, because these laws have also been harmonized by parallel Community legislation. The same basic criteria are used for registration and infringement of trademarks Community-wide.

Most marks consist of visual signals - words or symbols - and are easily recorded on the register. Although modern registers are stored in digital media these days, they take a documentary form. European trademark legislation provides that any 'sign', which is capable of distinguishing, may be registered, provided it is 'capable of graphical representation' and therefore can be recorded on the register. Thus registration is not limited to words or symbols. Other visual marks, such as colours, may be registered. Furthermore, non-visual 'signs' such as musical jingles have also been registered. What about smells?

A few smell marks have achieved registration. In the case of Sieckmann v. Deutsches Patent- und Markenamt i, Advocate General Ruiz-Jarabo Colomer describes some of these. The smell of freshly cut grass was registered as a Community Trademark and in the Benelux for tennis balls; the UK Trademarks Registry has registered the fragrance of roses, applied to tyres, and the smell of bitter beer, applied to flights for darts. Five applications for olfactory marks have been published in France.

In all of the successful registrations the smells have been suggestive additions to the basic product. But what if the products are perfume or toiletries, where the smell forms an essential if distinctive ingredient of the product? A-G Colomer cites the Benelux Trademark registry as having allowed registration of an olfactory trademark for cosmetic products, but commentatorsii and many trademark registries say that in these cases the smell functions as part of the product and not as an indication of source. What if the basic product smells unpleasant, and the fragrance renders it more acceptable? In another caseiii, OHIM rejected an application to register the 'smell of raspberries' for diesel and domestic fuel. The Office took the view that consumers would not regard the scent as distinctive of the applicant's product but rather as one of industry's many attempts to make these goods smell more pleasant.

The Sieckmann case makes reference to various European trademark registries beginning to see difficulties with registering smells. The UK Registry rejected an application to register the 'smell, aroma or essence of cinnamon' for furniture products. And in the Sieckmann case itself, the European Court of Justice gave a ruling on the registration of smell marks. The court confirmed the principle that non-visual signs could be 'trademarks' and thus registered, providing the sign was distinctiveiv. However, the case turned upon how smells might be represented graphically. By rejecting all of the main possible modes of representation - by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements - the ECJ has made it well-nigh impossible to register smell marks for Europe in the future.

Citing Theofrastus on the intoxicating and all-powerful scent of the rose, Maniatis observed

'perhaps it is better for people to avoid trademarking scents, and, instead, let the scent of the rose fulfil its superb function, irrespective of its name, even when it can indicate origin.'

By Sieckmann, the European Court has effectively removed scents from the trademark system.





i. Ralf Sieckmann v. Deutsches Patent- und Markenamt (C273/00) [2002] E.C.R. I-11737 (ECJ); [2003] Ch. 487; [2003] R.P.C. 38 ECJ; [2003] E.T.M.R. 37 ECJ.(«)


ii. For example the commentary cited in the Sieckmann case: Maniatis 'Scents as Trademarks: propertisation of scents and olfactory poverty' in Bently & Flynn Law and the senses: sensational jurisprudence (1996)(«)


iii. Myles Limited's Application [2003] E.T.M.R. 56 OHIM (3rd Bd App).(«)


iv. a trademark 'may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective'.(«)