Abstract
With increasing industry sector, the IP field is growing in a faster pace due to technological advancements. This paper highly focuses on how Intellectual Property Law includes the protection of non-traditional subject matter under various IP regimes such as Trade Marks, Copyright, Patent and Designs. It highlights the olfactory marks under Trademark Act in India as well as at international jurisdiction. As non-traditional elements such as colours, sound, shapes have gained recognition with their distinctive nature olfactory marks are yet to get acknowledged at a greater level because of its vague properties and unstable nature. In this paper, there is inclusion of perspectives and jurisdiction of international IP system such as USA and European court with a comparative study of Indian jurisdiction. Where, USA through their legal aspects has still shown acceptance for registration of olfactory trademarks, India has yet to explore and even expand the way for olfactory marks registeration. This paper highlights the need of exploration of a unique side of elements of non-traditional forms of marks and even testing them in different regimes of IP Law. Thus, further focus on how it is difficult to recognise olfactory marks due to its lack of visual property and definition but still has a great scope ahead by technical means and methodology with supporting innovations.
Keywords
Olfactory marks, scent trademark, Trademark, trademark registration, non-traditional forms, Intellectual Property protection, Patent.
Introduction
Law includes the ideas that can be protected under law thus pro Property vides protection of the intellect works,inventions,logos,music,images. Intellectual Property rights are for the person who through their abstract ideas creates intellectual property for which protection is granted under IP Law. It includes artistic work, literary Intellectual work,logos,symbols,designs and all other distinctively recognisable properties which make them unique and thus their characteristics become different from others.
However, in this industry-driven world with increasing innovations, there are also other non-traditional forms of intellectual property which needs legal recognition in their respective fields. Hence, this paper talks about the protection of ‘Smells and Scents’ under IP Law, which comes under non-traditional forms of intellectual property. This kind of unconventional forms like smells and scents majorly for the perfume industries require recognition under this law.
Unlike other forms of expressions this type of subject matter is hard to define and difficult to put forth their characteristics. Therefore, raising questions on how to make it known on basis of their distinctiveness.
In late 20th century, protection of non-traditional intellectual property such as smells, sounds and colours gained attention initially. It was obvious that Olfactory mark is a complex subject matter as they are intangible in nature. The concept started to come into view in 1990’s. Olfactory trademarks was recognised when USPTO ( United States Patent and Trademark Office) granted a scent trademark to the company named ‘flowery smell of plumeria blossoms’.
In Sieckmann v. Deutsches case, the European court of justice stated that there is requirement for scent trademarks which is considered as a Landmark case in the history.
However, in India this subject matter has not gained much exposure. In India trademarks are registered under Trademark Act,1999. This act provides protection of trademarks regarding symbols and shapes but does not involve scent based trademarks to that extent as, it is less explored field.
Research Methodology
Research done in this paper is based on secondary sources like websites , journals and articles . It includes comparative study of international jurisdiction with Indian jurisdiction regarding Intellectual Property Law. It includes information analytics through various articles and case laws involving the challenges faced during recognising ‘smell/scent’ under intellectual property law.
The main focus is to explore the scent protection under IP law by acknowledging the international perspective and Indian perspective with their thorough analysis and comparative study.
Review Of Literature
J. McCarthy on Trademarks and unfair competition stated that scents can be protected if their characteristics involves non-functionality and have acquired distinctiveness. This shows that olfactory forms like smells and scents must have a distinctiveness to get acknowledgement in trademark protection under IP law.
There are various kinds of scents which can be categorised as primary scent markings,secondary scent marks and unique scent markings, these categorisation can be helpful for their special characters and make them eligible to be a trademark with their distinctive features. Olfactory markings help in boosting olfactory memory as people when defining a smell connect it with a different thing which makes their memory all based on the scent they inhale . Hence, as people find olfactory marks as a token of a memory rather than a Industrial product, it is to be noted that olfactory marks are not only a mere potential trademark but a whole lot more than that, being said an emotional expression remembered as a scent But at the same time, a scent cannot be defined figuratively as per the studies done by the scholars through research reason being its vagueness in nature.
Evolution
In this emerging global sector, there are inventions and innovations made to thrive for recognition in their respective subject matter. Thus, intellectual property law is evolving with time and acknowledging the aspects coming forth for industry driven subject matters for example the concept of Trademarks is expanding through the forms and expressions with distinctive characteristics as a major quality. With this scents have acquired a small recognition which is yet to explore fully. It is seen that smells with unique scents should also hold a distinct place in the IP sector as, it is a something which will make a person or the manufacturer look at it with different perspective. Majorly a scent possess two basic features they are:
Distinctiveness
Non-functionality
Graphical Representation
Graphical representation is one of the most important and required qualities of a mark to be registered as a trademark thus it holds utter possibility under trademark law in India as well as at international level jurisdiction like USA and Europe. As a result, it becomes difficult and problematic for smell marks as they cannot be defined graphically and visually, it lacks that quality which in turn poses a tedious task to identify as a trademark. Challenges are even faced regarding subjective nature of smells and it is difficult to convey smells digitally hence, in order to make the expression of smells a new quality can be introduced in the emerging industrial market to make them unique and distinctive . Therefore registering smell trademark can become beneficial for several industries striving on this subject matter and thus help them gain profits as a part.
Non-functionality
Among other basic requirements, non-functionality is the key requirement for eligible to be protected under IP law. For example, if a smell of a lotus flowers is injected in a face cream thus face cream being a cosmetic with a lotus flower smell serves the purpose. Hence, scent should be non-functional, it makes the fragrances or scent a potential trademark due to its basic features of being a different identified expression. Therefore, US started accepting the scent trademarks as, it served the basic requirements of being a non-functional property along with distinctive features altogether to identify it as a unique scent of its own to gain recognition and as a result protection in case of unjustified use for commerce purpose which could hinder the business rights of a entity.
Distinctiveness
A scent must be easily distinguishable from other goods to make it identifiable and unique. For this purpose, it should posses distinctive nature, which is a bit difficult to find in scent as, it lacks graphical visuals. It’s subject matter is complex in nature for analysis methods due to being intangible. For a trademark to be registered, it should show a clear and precise evidence to reflect it’s subject matter which is found lesser in this matter. For example in the US case, where application was accepted due to the product’s distinctive and unique quality whole in European Union, due to its limitation of being clear and precise, the application was rejected.
History
In 1990’s olfactory trademarks gain attention and was brought into courts for registration under IP for protection under law in case of infringement. Due to unique scent of certain fragrances it was hard to preserve the smell due to lack of recognition in the IP sector. Thus, applications were brought infront of courts for prevention of any unlawful use for commercial purpose. Being said this, there were many drawbacks to identify a particular ‘scent’ as an intellectual property. Due to its complex and intangible nature, it was becoming hard to identify it’s best quality being the complex subject matter. In Sieckmann v. Deutsches case, the European court of justice was of the view that a scent to be an intellectual property, to be precise a ‘trademark’ must be clear and precise with distinctive characteristics.
Scent Trademark in India
According to section 2(1) (zb) Trade Marks Act,1999,
“a mark capable of being represented graphically and which is capable of distinguishing the goods or service of one person from those of others”
This clause explains that a mark to be registered in India needs to have a distinctiveness characterstics and which should hold a graphic representation. Considering the above mentioned qualities to constitute a trademark, it is difficult to register a scent as a trademark as, it lacks graphical representation and distinctiveness features in turn posing challenges for scent registration. Therefore it’s a complex topic to adhere upon.
Indian Jurisdiction
As of now, there is no registration done regarding smell marks under Trademark Act, 1999 (Indian Trade Mark Law) because of lack of graphical representation and distinctiveness which are the basic requirements for a expression or non-traditional form to be registered as a trademark. Hence, applications are often rejected because of lack of above stated qualities. Therefore, highlighting the need of protection of scent under IP law in India as well as at international jurisdiction other than US, being said that, with the help of technology and new methods one can grow the way for registration of olfactory marks in the IP sector which will inturn benefit the perfume industries and give unique scents their deserved recognition in the country. As India does not provide grounds for registration of a scent trademark, the purpose of this paper is to grab attention on the matter which will strive further the stated objective.
Recognition of scent/smell marks in USA
In USA the scent marks are registered in USTPO. The major requirements to register a scent trademark is to have non-functional property and should have acquired distinctiveness. It is required that the applicant in the application process must mail the scented goods to the USPTO and the specimen for a scentmark ought to submit in person and not through electronic media. For example, scent marks registered in the USTPO consisted – Minty scent by mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%) by Hisamitsu Pharmaceutical Co. Inc. US has shown it’s interest in accepting olfactory marks or rather say scent trademark registration and the only with the valid reasoning. The reasoning being the qualities of the product should include a distinctive characteristic which will help the same from distinguishing from other products and make an unique space whichh couldn’t be hindered under intellectual property law protection. TRIPS on this matter states that the symbols or signs which are capable of holding representative and can be categorised and distinguished are considered to be protected under trademark. Article 15 of TRIPS state that “signs,letters,numbers, figurative components, colour combinations and any combination of these signs are eligible for trademark registration”. The capacity of a potential mark or expression be it symbol, logo, colour and for the matter scent must show a visual representation for their recognition to beat the principle of being a distinctive product, which will make them eligible for a different class and will be known as a trademark for its superficial character.
Comparative Analysis
As we read above, it is hard to define a scent mark to be eligible for trademark registration at jurisdiction level of any country, USA still has made a space for recognition of scent expression giving rise to a extraordinary product for their unique qualities. The registration of scent mark was accepted for Sumitomo rubber for their unique scent of a flower in tennis balls. The application was accepted as, the product held non-functional property and was a prominent mark for its distinctive features. On the other hand, India has yet to explore the field of this class of non-traditional marks because of its vagueness and hard to identify the visuals which makes the possibility of scent protection under IP law less. Similarly, Europe rejects the idea of adopting the scent expression as a trademark because of its unclear graphical representation. For example, General Court Of The EU rejected the application of registering the smell of ‘ripe strawberries” for cosmetics due to its lack of graphical representation evidence (Case T-305/04, Eden SARL v. OHIM,2006)
Case Laws
[1]Sumi tomo Rubber Co. (Japan)
In this, there was a plea of registration of a flower scent in tennis balls. The jurisdiction was of United States Trademark Office where Sumitomo was granted trademark registration for floral scent of its rubber tennis ball. Thus it shows acceptance of US Trademark Office for scent trademarks registration.(U.S. Reg. No. 256,602, 1990)
[2] Hasbro,Inc.- Play-Doh Smell Trademark (US 2018)
Where, Hasbro successfully registered the distinctive scent of its Play-Doh product a scent trademark.(US. Reg. No. 5467089 May 15, 2018)
[3]Eden SARL v. OHIM (General Court Of The EU, T- 305/04)
Here, application was rejected for registration of smell of ‘ripe strawberries’ for cosmetics reason being its lack of graphical representation and it’s unclear distinctive features.
In Verizon v. US, it was concluded that the non-traditional forms of expressions are granted registration only if they posses distinctiveness. Thus scent can also be protected under trademark if they posses distinctiveness features.
Thus, it is somehow clear in the above examples (case laws) that a scent or an olfactory mark to be registered as an official trademark and gain exposure and protection under IP law, must consist of the core requirements those being distinctive that is capable of being distinguish able from other forms of goods under marks along with carrying graphical representation for its recognition as an unique scent.
Suggestions
As we saw throughout this paper, smell and scents are difficult to define in terms of their characteristics this making the registration and even protection under Intellectual Property Law a bit tough process. Due to lack of visual property and lesser distinctive features makes it less explored in this field. Though there is less possibility due to above reasons smells and particular fragrances do need a recognisition for its unique scents and in turn making place for a different class of non-traditional olfactory markings in the IP law. Many would suggest if there is less chance in pavement for trademark registration one can opt for Patent registration for the ingredients and Formulas to make the fragrances with their specific characteristics and thus making it easy to distinguish. Features like active ingredients,formulas, chemicals, thickeners, constituting these solutes giving rise to a unique fragrance can pave the way for protection under IP law. The formula to make a particular scent could be a distinctive quality itself, addition to people’s memory of a relatable thing.
Conclusion
Concluding this paper with hoping to make a way for scent or smell registration under IP law in India as well as in other countries other than US which will evolve and expand the pavement for the same. As we saw above Scents can be registered on the basis of their distinctive features and non functional nature hence, it will always vary smell to smell and their components but there will always be a possibility for its recognition in this growing global intellectual property field of law. Due to unique scents and features, US in their landmark case laws have shown acceptance for registration for scent marks depending on distinctive nature, India too can expand the scope for the same in the coming future ahead.
[^1] Journal of Intellectual Property rights Volume 1 Issue 2
[^2]A Comparative Analysis of The Protection Of Scent Marks In The EU and USA: A Call To The Action For Nigeria.
[^3] Importance And Challenges Of Protecting Smell Marks In India By Ananya Banerjee And Sandhya A. Parimala.
[^4] Recognition Of Smell As a Trademark In India- Amlegals.
Rena Sanap
Law Student at NB Thakur Law College Affiliated Under Savitribai Phule Pune University.
[1] U.S. Reg. No. 256,602(1990)
[2] U.S. Reg. No. 5467089 (May 15.2018)
[3] Case T- 305/04, Eden SARL v. OHIM,2006