Intellectual PropertyIP Licensing

Trademarking a Scent – II

In the first part of the article, I discussed the challenges in trademarking a perfume smell and its scenario in the European Union. In this part, I shall be elaborating on the developments in United States and India.

Trademark registration the scents in the US

On the other hand, the Trademark Trail and Appeal Board of the United States Patent and Trademark Office, ruled in favor of the Celia Clarke’s case.[1] In the Clarke’s case, the applicant offered scented embroidery yarn and threads and placed advertisements stressing the fact that her company was the source off sweet-scented embroidery products. The applicant was able to successfully demonstrate to the Court that customers, dealers and distributors had cane to recognize her as the source of scented yarns and threads, As a result, her application to register “a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” for sewing thread and embroidery yarn was granted, thereby reversing the Trademark Examining Attorney’s refusal of registration.

In reaching its decision, the Court noted some of the following factors:

(1) the applicant was the only person who has marketed yarns and threads with a fragrance;

(2) the fragrance was not an inherent attribute or natural characteristic of the applicant’s goods, but rather a feature supplied by the application

(3) the applicant had emphasized the fragrance characteristic in advertising her goods in advertisements and at craft fairs; and

(4) that, because of the unique nature of the applicant’s product and her promotion of these products as scented, her fragrance mark was prima facie distinctive even though she had failed to indicate any specific scent or fragrance in her promotional materials.

The board in the decision ruled for the first time that the fragrance can be capable of serving as trademark to identify and distinguish certain type of products. The Clarke decision added scents in the kinds of intangible sensory subject matter like color and sounds which have qualified for protection under United States Trademark Act.  However, scents are difficult to trademark because in the United States, the trademark protection requires non functionality and distinctive aspect. The key consideration for a registration requires the aroma characteristics of the fragrance trademark to be promoted as a source identifier and not for its scent. The purpose of the functionality requirement is to prevent the proprietor of the trademark from controlling a useful product feature.

Fragrance as a trademark in US

Recently, Hasbro, an internationally renowned company was successful in getting a very particular smell of their Play-Doh trademarked. They described the smell as a “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” But is it that easy to get a scent trademarked in the U.S? Are all scents eligible to get registered as a trademark?

 In case of a fragrance to be registered as a Trademark, the applicant must be able to show the non-functionality and the distinctiveness of the scent. A product feature is functional if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article[2]. In the case of Hasbro, the scent of the Play-Doh was distinct as well as non-functional as to the use of the product. Therefore, it could establish the non-functionality aspect and was successful in getting the scent trademarked. The requirement is very difficult to meet because the products that are based on fragrance are typically always functional.

Air fresheners, perfumes, candles etc. function to emit pleasant scents and evoke sensational reaction in those who smell them. As such, trademark law fails to adequately protect fragrances. If an applicant can somehow show that their scent acts as product’s identifying characteristic and performs no function, then may be able to get the trademark protection. However, almost every fragrance product performs the core function of emitting a scent, this requirement is very impossible to be met. It is ironic that a scent as famous, established and recognizable as Chanel or Gucci is ineligible for the trademark protection which can open the possibility of producers to copy their products without the possibility of legal recourse.

Trademark Registration of a scent in India

In Indian law, trademark is defined under Section 2(1)(zb) of the Trademarks Act, 1999, 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”. This definition being generic in nature does not altogether eliminate the possibility of the inclusion of the non-conventional trademarks but the definition also does not seem to make room for the specific incorporation of non- conventional trademarks as a category either. This further becomes evident in the light of the fact that under Rule 25 (12)(b) of the Trademark Rules, 2002, an application for registration of a trademark mandates its graphical depiction and Rule 28 and 30 requiring that it should be represented on paper, in a durable form. Like the sound mark, the olfactory mark also cannot be visually identified thus, the mandatory requirement for graphical depiction may act as a significant obstruction to the recognition of olfactory marks as a legitimate trademark in India.

In India, the possibilities of the law recognizing a smell mark as a legitimate trademark is yet to be realized and explored, by both those affected by its absence, and the law itself.

[1] Clarke,17 U.S.P.Q.2d 1238 (T.T.AB 1990).

[2] Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995).


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