BY MANJUNATH N.G.
Trademark
An Innovative Approach
Since ancient times consumers have relied on traditional trademarks, typically, words, designs, numerals and/or devices, as symbols of uniform quality. Recent developments are enabling traders to rely on less traditional forms of trademarks that appeal to the senses in a different way, namely through colour, scent and sound, the adoption of which warrants special consideration.
Olfactory, odour, scent or smell mark is one of the innovative approaches in the field of trademark. Marks consisting of scents are the most problematic. In addition to the practical difficulties of describing such marks sufficiently to determine where conflicts may exist, there is little legislation or jurisprudence on the subject.
A scent mark was first recognized in 1990 in the United States, where a scent, described as a high impact, fresh, floral fragrance reminiscent of plumeria blossoms, applied to sewing thread, was deemed a registrable trademark (In re Clarke, 17 USPQ2d 1238 (TTAB 1990)). The international marketplace does not appear as welcoming. As discussed above, neither the GATT-TRIPS Agreement, European Union Directive nor the Community Trademark Regulation address protection for scent mark. The new United Kingdom Trade Marks Act neither provides for nor prohibits protection for scent marks, thereby presumably allowing registration of scents, although time and practice will tell.
Graphical Representation is one of the important requirements to register a trademark. The most important requirements that need to be fulfilled in order to register a trade mark is the capability of “being represented graphically” and the fact that a sign shall not be registered if it “consists exclusively of the shape which results from the nature of the goods themselves”.
In the matter of Ralf Sieckmann v. Deutsches Patent-und Markenamt, the question was considered whether the requirements of graphic representation of a smell mark were satisfied where an odour was reproduced by: (a) a chemical formula; (b) a description to be published; (c) a deposit of an odour sample; or (d) a combination of the above-mentioned surrogate reproductions. The Court ruled that, as regards a chemical formula, few people would recognize that such formula would relate to the odour in question. As the chemical formula did not represent the odour of the substance but the substance as such, it was not a sufficiently clear and precise representation of the trademark.
The actual description of the odour, moreover, was not sufficiently clear, precise and objective. The deposit of an odour sample did not constitute a graphic representation and, moreover, was not sufficiently stable and durable.
Hence considering these reasons, the European Court of Justice (ECJ) in Brussels held on December 12th 2002 that, in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.
There are quite a few voices in the literature that do regard the graphical representation of a smell as being possible. Among several very sophisticated methods of recording smells, most noteworthy is the “gas chromatography” (GC) or “high performance liquid chromatography” (HPLC). These techniques can analyse the volatiles given off by the fragrance and the structural identification of the chromatographically separated active components can be further accomplished by instrumental methods like mass spectrometry (MS), nuclear magnetic resonance (NMR) or infra-red (IR) and ultra-violet (UV) spectroscopy.
The court can give both the concentration and chemical identification of the active components of an unknown mixture. An optimal solution is regarded to be a combination of the gas chromatography, a description of the olfactory mark in words and a reference to the manufacturing process. Another approach is the representation of the structural formula of pure substances. According to the Law of Definite Proportions, a compound always consists of the same elements with the same mass proportions; a pure chemical substance exists exactly according to its structural formula and is reproducible at any time.
Approaches towards scent mark have been taken by many countries like U.K., U.S., Australia etc. around the globe. India is still a step behind and hasn’t registered any of scent mark yet, but registration of fragrance marks in India is not expressly excluded, although such marks require graphical representation, which may make them difficult to register under current practice. There also appear to be no judicial decisions concerning the protection of such marks under other theories such as unfair competition.
Hence it does not specifically deny the application of the unconventional Trade Mark in India and determines registrability of unconventional marks, with emphasis on colour, scent and sound. Within the world scenario, India too has recognized the value of IPR, which recognition has been consistently upheld by legislators, courts and the industry. India is now a signatory to various IP treaties and conventions. This has helped India become more attuned to the world’s approaches and attitudes towards IP protection. India has already taken steps under TRIPS to comply with its obligations.
The Indian IP law regime is almost at par with the regimes of many developed nations. Historically, the enforcement of IPRs in India was not particularly effective. However, recent judicial rulings and steps taken by various enforcement agencies demonstrate the improved enforcement of the existing legal framework. Hence there is hope of reviving as well as protecting marks in India.
CONCLUSION:
These emerging concepts like scent mark, sound mark, colour are giving a new vision to Intellectual Property Rights. Though these concepts are debatable, still it is accepted globally as a trademark and given importance in a number of countries globally. Intellectual Property is appreciable. The importance of IPR and their protection is acknowledged the world over as essential to business. The awareness among people towards IPR protection is also increasing.