Olfactory mark is one such non-conventional trademark In India : A Legal Enigma

INTRODUCTION

An olfactory mark is one such non-conventional trademark. The field of Intellectual Property has grown significantly over time, particularly in the field of trademarks, as it has recently undergone a lot of development. However, as technology and commodities evolve, certain kinds of non-conventional trademarks emerge in the market that are left outside the scope of the existing legal framework in India, due to their unusual nature. An olfactory mark is one such non-conventional trademark.

Smell is the most basic of five senses and it means to “perceive the odour or scent of something through stimuli affecting the olfactory nerves”. This creates images in a person’s mind, which play a significant influence in a consumer’s choice to purchase a product. Despite its significance, the idea of olfactory marks lacks general acceptance due to the ambiguous position and non-uniformity of national legislation. The explanation for this disparity in olfactory mark registration is that they are subjectively defined and hence open to interpretation. As a result, there have been several disputes over the legality of such olfactory marks and their registration. The purpose of this blog is to examine the current legal regime governing olfactory marks in India.

TRIPS AGREEMENT AND OLFACTORY MARKS

The “Trade Related Intellectual Property Rights Agreement (TRIPS)” which applies to 164 members of WTO serves as the foundation of the intellectual property regime in India. The TRIPS agreement includes trademarks, patents, copyright, industrial designs, geographical indications, and trade secrets.

Section 2 Article 15 of the TRIPs agreement  defines “Protectable Subject Matter” as “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible”. Therefore, the agreement does not explicitly include non-conventional trademarks, nor does it rule out the possibility of registering a non-conventional trademark. The TRIPs agreement recognizes the rights of the nations which are members of TRIPs and it allows to mandate graphical representation of the trademark under the domestic legislation of the respective nations. As a result, while the TRIPs agreement broadens the scope of non-conventional trademarks globally, it does not clearly define the criteria for graphical representation of non-conventional trademarks, including olfactory marks.

POSITION OF OLFACTORY MARKS IN INDIA

Section 2(1) (zb) of The Trademarks Act of 1999  defines “trademark” 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 and may include shape of goods, their packaging and combination of colours”. The word “non-conventional trademark” refers to the trademark that does not fit within the standard definition of a trademark. Examples of these marks are hologram marks, sound marks, smell marks, motion marks, and taste marks. Further, Rule 28 of the Trademark Rules, 2002 defines graphical representation as the ability to be expressed in both paper and digital form. According to these definitions, any mark can be registered under the Trademark Act of 1999 if it meets the following criteria:

  • “A Mark” (section 2(M), The Trademarks Act, 1999)
  • The mark can be graphically represented
  • The mark can differentiate one’s product from other’s products.

Further, Rule 25(12)(b) of the Trademark Rules, 2002 requires that a graphical representation of the mark that has to be registered, must be available for registration and that the same should be rendered on paper as per Rule 28 and 30. This necessity of the graphical representation for filing a trademark acts as an obstacle in registering an olfactory mark in India. This makes the registration procedure more complicated because a basic description of chemical composition cannot be considered as an appropriate graphical depiction. The smell must be explicitly related to the concerned commodity and should give it a sense of uniqueness and distinction to qualify as a trademark. Furthermore, the smell-mark that is ought to be registered, should not be the natural fragrance emerging out of the properties of that commodity. The Indian Draft Manual of Trade Marks, 2015, elaborates the same principles for graphical representation of the mark. However, the Indian courts have gone the extra mile by allowing for the registration of “Zippo Lighters”. Even though the subject matter for the said registration was the shape of the lighter, the court went beyond the limitations of trademark registration as applicable in India and the shape of the product was protected under the Trade Marks Act, 1999. Furthermore, the registration of characteristic sound mark of Yahoo Inc. explicitly depicts that the limit of graphical representation of a mark does not appear to be the sole stumbling block for the registration of an olfactory mark. It is further argued that the olfactory mark does not function as a valid trademark since the human perception of smell is subjective in nature. Therefore, the Indian legislature has yet to acknowledge the olfactory mark as a valid trademark.

CHALLENGES IN REGISTERING AN OLFACTORY MARK

The trademark protection of “smell” has been a matter of debate for a long time. Although, several nations have laid down specific domestic regulations for the protection of olfactory marks, the criteria established by those nations are in dispute. Some of the opinions are in favour of protecting the olfactory mark as a trademark as it helps in distinguishing the product from that of others. While the nations which do not allow for registering an olfactory mark state that the smell can be confusing for the public and there would be difficulty in differentiating the olfactory marks without expert aid. Even though olfactory marks have achieved recognition in various nations, the legal provisions are not stringent and there is a need to amend the already existing laws according to the development and inventions happening all around the world. As some of the countries have a provision for the registration of olfactory marks there is a contradiction that can be seen between the rules laid down for registering olfactory marks among those countries. As Australia and Europe rely on the Sieckmann Test while the United States abide by the Supreme Court’s Qualitex Ruling for the registration of an olfactory mark.

CONCLUSION

In the light of the above findings, it may be concluded that registration of an olfactory mark as a trademark seems to be hazy and unclear as there are several loopholes in the existing regime governing the registration of olfactory marks. Since the role of an olfactory mark is of greater importance in today’s world, its protection becomes a mandate for the owner. As USA and Singapore allow for partial registration of olfactory marks, the confusion regarding the same marks must be resolved and stringent laws should be introduced in India governing the registration of olfactory marks.

Author: Nikhil Verma – a student of  B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorney.

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