The Indian Aroma: Protecting Through Unconventional Trademarks, ‘Smell Marks’

What is the music that comes up before your favourite cartoon show ‘Doremon’ airs? The famous theme song we are all so familiar with. What sets Pepsi and Coke apart before you have even tasted it? The shape of their bottles. Similarly, when you enter Starbucks, what intrigues your senses? Of course, the distinct aroma that Starbucks’ carries

Hence, just like traditional trademarks that target the sense of sight or the sound marks that target the sense of hearing, distinct smell marks target the sense of smell.

Marketing through olfactory marks (smell marks) is the next big tool to be utilized in strengthening one’s brand because just like any other traditional trademark, it helps the consumer relate back to the experience associated with a product or service. With the increase of such olfactory marketing, small artists in India engaging in production of traditional perfumes, are vulnerable to exploitation by big giants.

This article ponders upon the need to protect India’s Traditional cultural expression, “attar”, a fragrant essential oil, native to Kannauj, India, through an unconventional trademark- ‘Smell mark’, specifically from the perspective of attars being a Traditional Cultural Expression. These businesses call for protection- Protection not only from the cultural appropriation but also from commercial excesses mutual to other business giants.

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SMELL MARK- The Status Quo

Internationally, smell marks seem to be securing its position firmly. Some nations like the US and EU, through statues or judicial route, have permitted registration of smell marks. On the other hand, TRIPS agreement doesn’t really provide protection to unconventional marks, however, it does not completely bar it either, as  Article 15 (1) of the Agreement states that the members ‘may’ impose the requirement of marks being ‘visually perceptible’ to be registrable.

However, when specifically talking of India, the laws are parallel to that of TRIPS agreement where the Trademark is defined as something being ‘represented graphically’. This forms a major hurdle for the smell marks to secure its position as smell marks cannot be graphically represented. Nonetheless, the Indian Draft Manual of Trade Marks 2015 (‘Draft Manual’) does the minimal of at least recognising smell marks, however, it also has adopted a problematic standard for the registration of smell marks, as discussed below.

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 SMELL MARKS AND INDIAN AROMA- The Stumbling Stones

Attars fall within the ambit of Traditional Cultural Expressions (‘TCE’) category as defined by WIPO\. Also known as “expression of folklore”, TCEs include cultural expressions such as art, music, dance, or any other artistic or cultural expression. WIPO states that TCEs can be protected under existing IP systems, such as Trademark and Copyright laws. Trademarks can be used to identify authentic indigenous arts, as the Maori Arts Board in Newzeeland Te Waka Toi, has done. Some countries also have special legislation for the protection of folklore.

Perfumes can very well be brought within the ambit of artistic expression. In a landmark judgement for an exquisite perfume Tresor, the Dutch court found fragrances very well qualify as an artistic expression.

Attars of Kannauj are popularly known as ‘Kannauj Perfume’ and were registered as Geographical indications in 2009 due to high repute and the linkage between Kannauj and attar. However, small businesses of attars may not enjoy such protection in the form GI. Attars qualifying as artistic expression and falling within the ambit of TCE, call for some sort of protection as WIPO specifically mentions protection of Traditional Cultural Expressions.

Due to lack of protection granted to such perfumes, large companies may exploit their products into fanciful items. A shield in the form of trademark is a must to prevent their labour and goodwill from being taken undue advantage of. This may also benefit market efficiency. However, there exist stumbling blocks for attars to pave their way.

Looking up to Precedents internationally, we see the European Court of Justice’s (ECJ) 2002 landmark decision of Ralf Sieckmann v. Deutsches Patent und Markenant. The judgement, though made it clear that smell marks may be protected, the criteria for the same was burdensome. The judgement involved the “Sieckmann criteria” and required the smell to be-clear, precise, self-contained, easily accessible, intelligible, durable and objective. These criteria were extensive and burdensome, moreover, no mechanism was made clear by which these marks may satisfy the burdensome criterion. The judgement also barred three mechanisms of recording scent marks, that included description and submission of a chemical formula.

In India, the Indian Draft Manual of Trade Marks 2015 (‘Draft Manual’) does the bare minimum. It merely joins the international trend of recognizing unconventional mark, however, it follows the same “Sieckmann criteria.”  The draft goes on as “Whatever may be the case, for purposes of registration as a trade mark, unless the mark is ‘graphically represented’ it will not be considered to constitute as a trade mark.”

The next hurdle is that of the functionality doctrine. Functionality doctrine simply put, means that any product feature which is also functional cannot be trademarked. In the case of smell marks, lets take the example of perfumes. The smell is the entire primary function of the perfume, it’s the ‘functional feature’. This is a constant argument put forth preventing registration of smell marks.

Halsbury’s Laws of India on Intellectual Property makes two broad classifications: de jureand de facto functionality. De Jure can be defined as something ‘functional in law’, as in, if something whose utility is so high that the configuration makes such a primary design which others need to copy to be able to compete effectively. Let us take the example of  Surya Roshni Ltd. v. Metalman Industries wherein, Delhi High Court opined that since the use of particular colours was specifically required by ISI to be used on steel pipes, this made the colours functional by law, hence, rejecting Surya Roshni Ltd. Claim that their double band of colours was protected. On the other hand, De Facto functionality as held in Re Morton-Norwich Products, Inc means that although a feature forms an essential part of the product’s functionality, it still may be trademarked by the unique proprietor if there is no necessity for other traders to do so in order for their goods to function.

Therefore, considering the argument of ‘functionality’ when it comes to perfumes, it hardly holds any water as while the scent itself is functional, it is not a need of importance for competitors to mimic the exact chemical combinations. Reason being stated above that the functionality theory comes into force only when the idea behind barring functional features is the ‘element of necessity’. However, there is no element of necessity among the perfume makers to always use the exact same chemical formula and their products will not lose their functionality if they do not use the exact chemical formula. If any particular scent is protected, other traders will not be disadvantaged and neither is that one chemical formula necessary for them to compete.

CONCLUSION

The sapling thought of trademarks being community properties is in fact a powerful tool aginst exploitation of Traditional Cultural Expressions, without giving in to the view that trademarks are only used to enhance market efficiency. Moreover, in the present case scenario of Attars and Agarbattis, trademarks protecting ‘the unconventional’ in form of scents also compels the law to recognize such TCEs. Unconventional marks like smell marks can help protect attars from not only cultural appropriation but also from commercial excesses mutual to other businesses.

Author: Sonal Kumari – a Student at National University of Study and Research in Law Ranchi, currently doing internship  at Khurana & Khurana, Advocates and IP Attorney, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com.

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