This is the second post in a series of posts relating to frequently asked question. The first post is available here.
Can a company register the unique fragrance of a Leather Jacket by submitting the chemical formula to the TM Registry?
The problems with registering a smell mark are:
- it is difficult to represent graphically;
- it is difficult to differentiate between two scents;
- it is difficult to describe the scent in words.
The European Court of Justice in Siekmann case (Case C-273/00, ECJ, December 12 2002) has observed that chemical formula does not represent smell and hence smell cannot be registered as trademarks in Europe. It held that though smells are capable of distinguishing the goods from that of others but still since they cannot be represented graphically, they cannot be registered. It was also observed that providing a sample of the smell is also not valid because it will degrade over time. Also, a chemical formula merely represents the substance rather than the scent and does not satisfy the condition of graphical representation.
The smell mark of YM Jackets will be rejected since the mere chemical formula is not enough to fulfill the requirements of graphical representation.
The smell mark of YM Jacket may be registered if it has acquired distinctiveness through use (In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990)) provided that the smell must not result from the nature of goods, functionality of goods and must not be a result of the manufacturing process. Furthermore, the consumers/end-users must directly identify the smell with that of the jacket of YM Jackets i.e. it must acquire a secondary meaning.
Moreover, the EU TM office (OHIM), in 1999, registered the smell of freshly cut grass for tennis ball (Vennootschap onder Firma Senta Aromatic Marketing, CTM Application No. 428870, filed Dec. 11, 1996, registered Oct. 11, 2000), since it was distinctive and was not resulting from the nature of goods.
Another example of registered smell mark is that of a floral fragrance for vehicle wheels under Class 12 (Reg. No. 2001416).
Image from here.