Imagine walking through a busy shopping centre when you suddenly smell a very unique and a distinct scent of freshly baked cookies and cakes from a famous chain of bakeries or imagine a scenario where you smell a freshly brewed coffee and instantly associate it with a famous global brand. These sensory interactions are powerful sword for marketing that raise brand recognition aspects right away. This raises a question here that can these smells and aromas be legally protected in India? Can business entities claim an exclusive right for commercial purposes over these smells and aromas?
Brands are looking for innovative means to stand out and to differentiate themselves in a market that is becoming more and more competitive. Unconventional and non- traditional markings like smells and odours represent the next frontier of intellectual property protection, even if visual trademarks like logos and word marks are commonly used and known trademarks, I mean imagine non-visible marks are also subject to registration as a trademark for a business.
This blog aims to explore this aspect of trademarks if smells and tastes can be protected by a company and can it be exclusively owned by them?
The Existing Legal Structure in India
The legal regulations existing in India at the present moment is Trademarks Act, 1999 under its Section 2(1)(zb) describes a Trademark as “a symbol that can be depicted visually and is able to differentiate the products or services of one individual from those of others.” Reading and going through this definition of what actually comprises of a trademark, we do not see an explicit barrier or restriction for smell and flavours but an analysis and understanding of the law tells us that there must be a “visual depiction” of the mark to get it registered as a Trademark, which is an essential to getting it registered. Only if we see a logo is when we can associate it with a brand.
In what way can one visually depict or show a scent or flavour in order to fulfil this mandate of visual representation? Olfactory marks can only be sensed by an individual and there is no visual depiction of such marks, this is an issue to focus on as visual mandate was imposed so that an association with the owner brand is made as soon as the logo is seen. The Indian Trademark Registry has historically permitted only visible marks that can be distinctly visualised or illustrated on paper.
Global Examples: Gaining Insights from Worldwide Experiences
There are a number of fascinating examples in the global environment. The landmark Sieckmann decision did establish strict guidelines for scent mark registration in the EU, requiring that the representation be “clear, precise, self-contained, easily accessible, intelligible, durable, and objective.” There have been only a few businesses that have been successful in getting their scent marks registered by passing the stringent regulations in the EU.
One notable exception was the smell of “freshly cut grass” for tennis balls, which was observed in the UK before the Sieckmann criteria were established. The scent of “Plumeria flowers” for yarn and sewing thread was granted trademark protection in the US. These illustrations above depict that even though getting a sensory mark like scents registered is difficult but not an impossible task.
Globally, taste faces much more formidable obstacles. Tastes cannot now be registered as trademarks, according to the EU Intellectual Property Office, because they are not accurately represented as per the required standards. Another practical issue is how to assess a flavour without actually tasting the product.
Distinct Difficulties for India’s Sensory Marks
Several distinctive problems arise in the Indian context:
- Functional Doctrine: Under this doctrine, if the flavour, smell or odour serves a functional role or provides an utility to the consumer using it beyond serving as a means to identify the source of the product then cannot be registered as a trademark as a mark must be able to direct the customers to the brand.
- Cultural Aspect: India is a nation of diversity. Many of our everyday practices related to culinary or customary are influenced by the rich source of customs and traditions. Trademarking tastes and scents in our country is a challenge as most of the knowledge for such manufacturing comes from traditional texts. It is a collective heritage and is not a proprietary creation. This can be a challenge.
- Challenges with Documentation: At the moment, the Indian trademark office lacks clear protocols and regulations for the recording and evaluation of non-visual markings like fragrances, taste etc. The Trademark Rules 2002, Rule 28 & 30 require and mandate a durable representation on paper also Rule 26 of the same rule ensures that a graphical representation is done at the time of registration of the mark.
Distinctiveness Examination: A Significant Obstacle
A crucial and a necessary requirement for any trademark registration, including non-conventional marks like sensory types, is distinctiveness and uniqueness. A flavour or aroma need to be able to distinguish one thing from another, it must be unique and not be similar. This poses a fascinating and an interesting question to ponder upon: in a country with so many diverse and rich sensory and culinary traditions, how distinctive can a flavour or odour be? It is a collective knowledge which is accessible to a large community and cannot be said to be owned individually.
Consider the following hypothetical scenario: Can a chain of restaurants trademark the distinct aroma of its proprietary masala mix? India is known for its spices and how different cultures have a different style of preparing masalas based on the culinary customs like biryani masala, pav bhaji masala etc. The answer depends on whether or not customers link or associate that perfume with that specific brand rather than just believing it to be of a pleasant food fragrance.
The significance of distinctiveness in trademark matters has been emphasized by Indian courts on a regular basis. The Delhi High Court stressed that a trademark should serve as an origin symbol in the “Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.” case. It would be necessary and crucial to show that consumers connect the flavour or aroma/fragrance to a particular commercial origin in order to apply this idea to sensory branding.
The Terrain of the Future: Which Way Is India Going?
The evolution of Indian trademark law suggests that there has been a shift from traditional marks registration to the non-traditional marks. An example of this can be Sound markings that have gained popularity recently, indicating a slow expansion beyond just visually represented trademarks.
The representation problem may also have technological solutions as the world is developing and advancing with the advent of technology. The solution can be taste profiling, digital scent technology, and sophisticated chemical analysis, that can meet the requirement for graphical depiction.
Significant practical and legal obstacles still exist even though the registration of flavours and smells as trademarks is not expressly prohibited by India’s current trademark system. Sensory markings have particular challenges due to the requirement for visual representation and distinctiveness or uniqueness of the mark.
The door of acceptance isn’t completely closed on sensory trademarks, though, and as technology develops and legal perspectives shift in this 21st century of advancements, we may see a rise in the acceptance of these unconventional forms of intellectual property.
The sensory border of trademarks represents a fascinating intersection of human perception, trade, and law. It will be interesting to see how India addresses these unique issues as its trademark system develops.
Author: Rakshita Ohri, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.
References
- The Trade Marks Act, 1999 (India)
- Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00
- Venkateshwaran, R. (2022). “Non-conventional Trademarks in India: Challenges and Opportunities.” Journal of Intellectual Property Rights
- Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., 2003 (27) PTC 478 Del
- World Intellectual Property Organization. (2023). “Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications: Non-traditional Marks”
- Bharadwaj, A. (2024). “The Evolution of Trademark Law in India: Embracing New Frontiers.” National Law Review
- European Union Intellectual Property Office. (2023). Guidelines for Examination of European Union Trademarks
- United States Patent and Trademark Office. (2022). Trademark Manual of Examining Procedure