By Aakrishti Kumar
Abstract: this article shall be divided into three parts: the first part introduces the current status of unconventional marks in India. The second part, explains the problems faced in registering smell marks as a trademark under the Indian Trademarks Act, 1999. It throws light on the need to accept unconventional marks under the trademarks realm. Registration is required as this would put India at an advantageous position as there would be harmonization of systems throughout the world and will simultaneously result in better quality goods within the nation. The article will deal with the solutions for registration of smell marks, mostly concentrating on graphical representation, the essential which has been the most troublesome. The author shall prove how this practical difficulty can be overcome.The last part of the article shall include the concluding remarks on registration and why it is a natural consequence for smell marks.
- Introduction
A number of behavioural studies have demonstrated that smells trigger more vivid and emotional memories and are better at inducing that feeling of “being brought back in time” than images.[1]Also, evidence suggests that memories triggered by an odour (like scent of a rose) were accompanied by greater activity in the limbic system than memories triggered by the verbal label.[2]This shows that human sense of smell has extraordinary capacities for discrimination yet the IndianLaw is yet to pick up the scent of smell marks and inhale its benefits.In this era of globalization, not allowing smell marks their deserved stature would be a regressive attempt and would have unnatural consequences.
However, India’s position is not stagnant. It is gradually expanding its ambit under the meaning of ‘marks’ to include unconventional marks as well. India’s first registered sound trademark has been Yahoo’s yodel[3] and more recently ICICI Bank secured rights for its corporate jingle “Dhin Chik Dhin Chik”.[4]Hence, it is not erroneous to think that India is steadily moving towards the acceptance of unconventional marks and in future a large number of smell marks shouldbe registered hassle free.
- Problems hindering registration
To understand the ambit of registration, satisfaction at three fronts should prevail. (A)Is a smell mark capable of satisfying the functions of atrademark?(B)Is a smell mark capable of satisfying the objectivesof trademark law and (C) if a smell mark lieswithin the meaning and definition of trademark then how is graphical representation a hindrance?
(A) The functions of trademark law are[5] (A.1) identification, (A.2) source, (A.3) quality and (A.4) advertising. If a trademark is capable of fulfilling the aforementioned it becomes immaterial whether it is a conventional mark or an unconventional mark.
(A.1)“It is the source distinguishing ability of a mark and not its ontological status as colour, shape, fragrance, word or sign that permits it to serve these basic purposes. And, for that reason, it is, difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of colour as a mark. We conclude that, sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents colour alone from serving as a trademark”[6]The same argument can be easily extended to smells alone serving as trademark.The bountiful nature of the Trademarks Act[7] allows the term smell marks to find a place in the said statute.
(A.2) Overtime, customers may come to treat a particular smell on a product or on its packaging as signifying a brand. And then just like any other commodity it would be capable of identifying and distinguishing the goods i.e. it would indicate the source. And if the consumer already associates the scent with the source of the product, registering the mark seems logical.
“The imaginary word “Suntost” or the words “suntost Marmalade” on a jar of orange jam would signal a brand or a product “source”, the jam’s colour does not do so.”[8]But, overtime it will be capable of doing so much in the way descriptive words on a product can come to indicate a product’s origin. In such a circumstance, it can be said that smell marks may not always be inherently distinctive yet they are capable of a secondary meaning i.e. consumers will recognize the mark as a source indicator. In United States of America, a mark which was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” was granted trademark law protection for sewing thread and embroidery yarn.[9]So, a fragrance has higher chances of being registered if it is unusual to the product that it represents.
(A.3) The secondary objective of trademark law is to protect the trademark owner or the producer’s trade or business as well as goodwill which are attached to his/her trademark. “The spirit, intendment and purpose of trademark legislations to protect the trader and consumer against dishonest adoption of one’s trademark by another with the intention of capitalizing on the attached reputation and goodwill.”[10]Hence, the law helps assure a producer that he/she will reap financial and reputation related rewards associated with a desirable product. The law, thereby,fundamentallyencourages the production of quality goods and discourages those who sell inferior products by capitalizing on a consumer’s inability quickly to evaluate the quality of an item offered for sale. Further, it is commonsense knowledge that a substandard product cannot stay relevant in a market for long. The consumers are bound to reject such products overtime.
(B) Trademark law has two fold objectives: firstly, it protects the public from confusion and secondly, it protects the trademark owner’s trade and business as well as the goodwill which is attached to his trademark.
TRIPS (Trade Related Aspects of Intellectual Property Rights) agreement states that “protection and enforcement of IPR should contribute to the promotion of technological innovation, and in a manner conducive to social and economic welfare”[11]Here, smell as a trademark can very easily satisfy the objectives on all the counts. The creators of trademark law in India intended to modernize the law and as a consequence an open ended and inclusive definition has been provided for ‘mark’.[12]The definition includes other things that fall naturally within the general and plain meaning of the definition. In a secondary sense, unconventional marks will find a place in the definition. This, in turn, would include smell marks, sound marks, taste marks, touch marks and colour marks. Basically, a trademark can be anything that identifies the source of a good or a service.Also, under TRIPS, members are free to determine whether to allow the registration of signs that are not visually perceptible i.e. sound or smell marks.[13] This statement echoes the fact that unconventional marks are no longer an alienated concept in the world of Trademarks. This reflects the need to interpret our domestic law as encompassing unconventional marks in the ambit of registration. The wisdom of the legislature lies in the broadness of the provisions which intended to retain flexibility for enhancement in the subject matter of trademarks.
It is submitted that the trademark manual[14] has clarified that non-traditional marks such as color and sound are capable of trademarks registration because these can be represented graphically but other forms of unconventional marks are not conspicuous under such bifurcation. Yet, this does not negate the possibility of a liberal interpretation.
(C) There are two essentials of a trademark[15]: (C.1) it should be capable of being represented graphically and (C.2) it should be capable of distinguishing the goods or services of one person from those of others.
(C.1) To define the scope of registration, a graphical representation along with a written description (endorsement) is sine quo non.[16]
A brief description stating “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” was granted protection for sewing thread and embroidery yarn. This,therefore, qualifiedthe written descriptionrequirement under the Lanham Act.[17]But, it is not unusual that a lot of scents have been denied registration because of an inaccurate written submission. The rejection of Chanel No. 5[18] was solely on this basis that the written description in the application was imprecise. Hence, hammering out a clear description of scent is one of the obstacles. Currently ten scent marks have been registered by the United States Patent Office.[19] One of these included a footwear chain receiving trademark for the coconut aroma they pump into their retail locations. Their written description was “coconut suntan oil scent and active lifestyle inspired music begins to tickle the senses and excite the toes of likely customers.”[20]
TRIPS must be interpreted as meaning that a trade mark 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 im-ages, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelli-gible, durable and objective.[21]
Electronic sensory analysis is one of the many ways to distinguish deceptively similar smells.[22] To ensure that it would be intelligible to anybody inspecting the registry of a claim for smell marks, a clause stating ‘disclosure of the test conditions’ may be added. Similarly, technologically advanced smell sensors which are highly sophisticated can also be used. Such olfactory measures will overcome the hindrance that graphical representation poses. This method will spearhead the search of objectivity in registration of smell marks.
However, durability is not something that can be expected from a smell. Sample deposition of a smell mark will result in diminished intensity of the smell overtime. Even if Indian law allows submission of samples in a sealed envelope it is bound tovolatize with time which means that a lasting olfactory impression is impractical.This can be countered by obtaining samples from local laboratory suppliers or from manufacturers and distributors of fine organic chemicals on a set timeline. The Trademark Manual has to be create provisions for qualifying experts to undertake this task. This will ensure accessibility of the mark, as well.
Durability of smell can be possible through break through products such as the ‘Scientology camera.’[23]It is a device that can store smell in miniscule quantities and can be used in future according to the whims and fancies of man.
Hence, for successful registration, a well drafted and highly specific written description must be written which can be approved by certain set of experts. This, dovetailed with the graphical representation of the mark (which can be fulfilled by the aforementioned methods) will result in a successful venture for trademarks in India.
(C.2) a prima facie case of distinctiveness had been presented in Clarke[24]according to Trademark Trial and Appeal Board (hereinafterTTAB), where the applicant had proved that the scented fragrance did function as a trademark for her embroidery yarn. The TTAB reasoned that Clarke was the only manufacturer of yarn with a scent, she advertised her yarn with the scent feature and had demonstrates that consumers recognized the scent as an indicator of origin. TTAB in Clarkeintended its decision to apply only to a potential fragrancemark that has a unique relationship to the product it serves (aunique-product scent) and has acquired sufficient consumer recognitioni.e secondary meaning.”[25]
Members may make registration depend on distinctiveness acquired through use.[26] This statement is a gateway to registration of ‘well known scent marks’, the ones that have made a name for themselves in the market through usage. Some companies have unintentionally created their own smell logos. Take the case of French subjects that associated the smell of cedar wood with the brandname ‘Crayola’, manufacturers of pencils.[27] This shows the effectiveness of such marks. Consequently,smell marks deserve primary importance. Hence a smell or sound that identifies a famous product needs to be protected to defend the product’s uniqueness.
- Conclusion
Scent marks are yet to see broad daylight in the subcontinent.Fragrance has been a predominant part of culture in India. There have been umpteen instances where without realizing certain brand names have created scent logo marks. It is time that the legislator’s wisdom is translated in judicial decisions. Registration of unconventional marks can begin with ‘unique scent marks’ which are well known in nature. Registration of these unconventional marks will give a manufacturer the exclusive right to use a trademark. Also, the registered proprietor will be entitled to obtain relief in respect of infringement of the trademark. Further, the scope of Indian Trademark Law needs to evolve to encompass the practical difficulties which manifest trouble when applicants try fulfilling the key ingredient: graphical representation of a trademark. Concluding this piece of writing, the author would like to suggest that the trademark rules should be amended so that other forms of unconventional trademarks can be entertained.
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Aakrishti Kumar is a law graduate from Dr Ram Manohar Lohia National Law University, Lucknow. A part of this article was submitted as a competitive essay at Symbiosis Law School, Hyderabad. Email: [email protected]
[1]Amanda White, Smells Ring Bells: How Smells Trigger Emotions and Memories,PENN STATE COLLEGE OF MEDICINE (Feb. 15, 2017, 11:00 AM), https://lions-talk-science.org/2014/10/08/smells-ring-bells-how-smells-can-trigger-emotions-and-memories/.
[2]G M Shephard, The Human Sense of Smell: Are We Better Than We Think(2004) PLOS BIOLOGY (15 Feb.15, 2017, 11.30 AM), https://www.ncbi.nlm.nih.gov/pmc/articles/PMC406401/.
[3]P Manoj, Yahoo Awarded India’s first Sound Mark; Nokia in queue, LIVE MINT(Feb. 26, 2017, 11:09AM)http://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-sound-mark-Nokia-in-queue.html.
[4]Agencies, ICICI Secures Rights for Corporate Jingle, The Indian Express, March 12, 2011 at 12http://archive.indianexpress.com/news/icici-secures-rights-for-corporate-jingle/761551/.
[5]VK AHUJA, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS (LexisNexis, 2007).
[6] Qualitex Company v. Jacobson Products Company Incorporation 514 U.S. 159 (1995).
[7]The Trademarks Act, 1999.
[8]Qualitex Company v. Jacobson Products Company Incorporation 514 U.S. 159 (1995).
[9]In re Clarke, 17 U.S. P. Q. 2d 1238, 1240 (TTAB 1990).
[10] Cadbury India limited and Others v. Neeraj Food Products 142 (2007) DLT 724.
[11]TRIPS Agreement Art. 7 Objectives.
[12]The Indian TrademarksAct, 1999, S(2)(m).
[13]TRIPS Agreement, Art. 15, Subject Matter of Protection.
[14]Manual of Trademarks.
[15]The Indian Trademarks Act,1999, S 2(zb).
[16]Manual of Trademarks, page 17-18.
[17]U S Trademark Law, Federal Statute
[18] Chanel No 5 perfume (WIPO Magazine, 2009).
[19]Nick Greene, 10 Scent Marks Currently Recognised by the US Patent Office MENTALFLOSS ( Feb. 15 2017, 1:30 PM), http://mentalfloss.com/article/69760/10-scent-trademarks-currently-recognized-us-patent-office.
[20] US Serial Reference No 85063625.
[21]Manual of Trademarks.
[22]Sudipta Bhattacharjee, The Broadening Horizons of Trademark Law- Registrability of Smell, Sports Merchandise and Building Designs as Trademarks, 10, JIPR.119,120 (2005).
[23]Max Campbell, Madeline is a Scientology Camera Capable of Recording the Smells you Love, VICE (Oct. 1, 2017,1:45pm)https://creators.vice.com/en_us/article/jpdy9g/madeleine-is-a-scentography-camera-capable-of-recording-the-smells-that-you-love.
[24]In re Clarke, 17 U.S. P. Q. 2d 1238, 1240 (TTAB 1990).
[25]In re Clarke, 17 U.S. P. Q. 2d 1238, 1240 (TTAB 1990).
[26]TRIPS Agreement, Art.15.
[27]Sudipta Bhattacharjee, The Broadening Horizons of Trademark Law- Registrability of Smell, Sports Merchandise and Building Designs as Trademarks, 10, JIPR.119,120 (2005).