Intellectual PropertyIP Licensing
Trademarking a Scent
Research and reports published in the recent years show that the perfume and cosmetics in the fashion industry are doing very well globally. The demand for these products has been increasing multifold and the developments in these industries are growing rapidly. Perfumes are now more often and in large quantities purchased which is giving rise to the sales of expensive products. A large part of the sales by these products are being carried out via internet. With increasing demand, competition among the large players in the market is also increasing. The industries release new products in the market with new formulae and promises of faster and better visible effects on the public.
Unfortunately, in parallel to the producers who compete fairly, there is also a growth in the number of people who choose to take the easy path. There has been a significant increase in the number of counterfeit perfumes produced worldwide. Producers counterfeit the products and sell them under different packaging and name. So how does the fragrance industry protect their products that their perfumers, chemists, and formulators create? Analytical techniques have made it possible to reverse engineer products in which a good chemist can easily determine with certainty the mixture and blend of the ingredients that are present in a particular product.
The next big question that arises is that can the smell of a perfume be registered as a trademark? Trademarks are basically symbols or marks that are given protection because they are commonly associated or related with certain brands and indicates their source or quality. Scents can also act as an identifying key for certain products. Some of the customers can without any mistake distinguish between their favorite designer perfumes. The original and distinct fragrance is one of the most important features of the perfume industry.
Trademark registration of scents in the European Union
For a long time, the possibility of protecting a scent as a trademark has been the subject of a decision of the European Intellectual Property Office (EUPIO), EU courts as well as foreign countries. For a mark to be registered as an EU trademark, it should meet certain requirements as defined in the Regulation (EU) 2017/1001 of the European Parliament and Council of 14th June 2017 on the European Union Trademark-
- It may consist of any sign, in particular words, including personal names or designs, letters, numerals, colors, the shape of goods or the packaging of goods, or sounds, provided that such signs are capable of:
- Distinguishing the goods or services offered by one undertaking from those of other undertakings; and
- Being represented in the Register of EU trademarks in a manner allowing the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
The jurisprudence in determining all the understanding about graphical representation of the olfactory trademarks, like the scent, goes back to the famous Ralf Sieckmann vs. Deutsches Patent- und Markenamt case. In this case, the applicant intended to register the olfactory trademark “balsamic-fruity odor with slight cinnamon notes” for various services falling in classes 35, 41 and 42 (such as catering, advertising, agricultural services, etc.).
The odor was described by the applicant as being “pure chemical substance methyl cinnamate (a cinnamic acid methyl ester”) and added a sample of the odor and its chemical formula – C6H5-CH = CHCOOCH. The court emphasized the requirement of the mark to be registered as a trademark to be graphically represented, in particular through figures, lines or characters, so as to be accurately identified. The court stated that the representation should be clear, precise, complete on its own, easily accessible, intelligible, durable and objective. The purpose of the graphical representation is to define the mark itself and the scope of protection of the exact object on which the protection is conferred. The Court, thus considered that the Chemical formula, the description of the odor; the presentation of a sample, and the combination of all these pieces of evidence did not fulfill the requirement of graphic representation and rejected the application. Sieckmann Accord onwards no other olfactory trademark was granted in the European Union.
Although, the new Directive 2015/2436 of the European Parliament and of the Council of 16 December, 2015 and the new EU Regulation 2015 / 2424 of the European Parliament and of the Council of 16 December, 2015 abolished the requirement of the representation of a mark to be graphic, but scents being capable of serving as a trademark is still a question unresolved.
The trademark of fragrance in the U.S and Indian scenario will be discussed in the next part.
 Sieckmann v Deutsches Patent- und Markenamt  Ch. 487;  3 W.L.R. 424;  R.P.C. 3.