Note:REGISTRATION OF OLFACTORY MARKS AS TRADE MARKS: INSURMOUNTABLE PROBLEMS?

Citation(2004) 16 SAcLJ 264
Date01 December 2004
Published date01 December 2004

In view of the impending amendment to the Singapore Trade Marks Act removing the requirement that signs have to be visually perceptible to be registrable, this article discusses the difficulties that proprietors will encounter in attempting to register scents as trade marks.

Introduction

1 In mid-2004, the Singapore Trade Marks Act1 (“TMA”) will be amended to remove the requirement that a sign has to be visually perceptible for it to be registrable.2 This article looks at the registration of olfactory marks in the 1990s in the United States and Europe and the recent stricter approach towards the registration of such marks in Europe, and discusses the problems proprietors will encounter in attempting to register such marks.

Early days

2 The definition of a trade mark in the US Lanham Act is wide enough to allow the registration of scents.3 To this author’s knowledge,

the only reported scent registration case in the US was a 1990 application to register a scent described as “high impact, fresh, floral fragrance reminiscent of plumeria blossoms” as applied to sewing thread and yarn. The application was upheld by the US Trademark Trial and Appeal Board (“TTAB”).4 However, the registration of the scent drew criticism.5

3 The United Kingdom Trade Marks Act 19946 (“UK TMA”) was enacted to implement the European Community Directive 89/104/EEC7 (“the EC TM Directive”). It provided that a trade mark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from another.8 There is no requirement that the sign has to be capable of visual perception, thus paving the way for the registration of sounds and scents. On the day the UK TMA came into force, Chanel sought unsuccessfully to register “Chanel No 5” as a trade mark.9 Chanel attempted to graphically represent the sign by describing its perfume as:

The scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamot, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylangylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent also being known by the written brand name No 5.

The application failed because a perfume constitutes the product itself as opposed to an indication of its origin.

4 On the same day, Sumitomo Rubber Co sought to register “a floral fragrance/smell reminiscent of roses as applied to tyres”10 and

Unicorn Products applied to register “the strong smell of bitter beer applied to flights for darts”.11 Both applications were successful.

5 In the EC, an application in 1999 to the Office for Harmonisation in the Internal Market (“OHIM”) in Alicante, Spain, to register “the smell of fresh cut grass” as a community trade mark (“CTM”) in respect of tennis balls was successful.12 The OHIM Second Board of Appeal held that the smell of freshly cut grass is a distinct smell that everyone immediately recognises from experience. For many, the scent of freshly cut grass reminds them of spring, summer, manicured lawns or playing fields, or other such pleasant experiences.13 Thus, the Board held that the description complied with the graphical representation requirement of Art 4 of the CTM Regulations (“CTMR”).14

Requirement of graphical representation

6 However, recent decisions in England and in the European Court of Justice (“ECJ”) have retracted from the initial liberal attitude towards the registration of olfactory marks. The main stumbling block is the inability of olfactory marks to be adequately represented graphically.

7 The raison d’etre of graphical representation is the need to be able to record and publish the mark, and to enable interested parties to ascertain the scope of existing trade mark rights by conducting a search of the trade marks register. This has been touched upon in a number of cases. In Ty Nant Spring Water Ltd’s Trade Mark Application,15 Geoffrey Hobbs QC sitting as the Appointed Person held that:

The degree of precision with which the sign is represented must be sufficient to permit full and effective implementation of the… Act relating to absolute unregistrability (section 3)16 and relative unregistrability (section 5),17 infringement (section 10)18 and public inspection of the register (section 63).19

8 In John Lewis of Hungerford Ltd’s Trade Mark Application,20 the applicant sought to register a scent mark described as “the smell, aroma or essence of cinnamon” in respect of furniture. The Principal Hearing Officer concluded that the description of the scent lacked definition and could not stand alone, but relied on the reader’s previous experience of the sign. He rightly pointed out one of the difficulties in registering olfactory marks: a person’s perception of the smell is likely to be influenced by the circumstances in which they have appreciated it. He cited the example of how a cook’s perception of what cinnamon smells like might be different from that of a consumer’s perception of confections or drinks containing cinnamon. He did not believe that the representation was precise enough to allow Examiners to compare the sign with other potentially confusingly similar signs for the purposes of deciding whether it came under any of the relative grounds of refusal (eg, cinnamon as compared to cloves or cassia) without the use of samples. He observed that a purpose of graphical representation is to:

… avoid the need for samples of goods, smells, music, etc, having to be stored in relation to Trade Marks Registers, which are inevitably paper or electronically based records.21

The applicants appealed.

9 The Appointed Person, Hobbs QC, dismissed the appeal. He held that the identity of the smell has to be clearly and unambiguously recorded. He pointed out the difficulty in attaining a precise graphic representation of smells.22 Hobbs QC also highlighted that even modern technological processes such as electronic sensory analysis23 and graphic profiles are unable to provide a satisfactory representation of the applicant’s mark. Perceptions of a smell vary according to the nature, purity, concentration, quality, age and temperature of the relevant olfactant(s), the influence of other olfactants, and also from one person

to another according to their ability to discern the smell in question.24 Thus, Hobbs QC concluded that the wording “the smell, aroma or essence of cinnamon” lacked precision as it was subjective. He did not think the description provided people with as much information as they would realistically need to know in order to determine how closely a given smell matches the one which the graphic representation is intended to identify.25

10 In Myles Limited’s Application,26 the OHIM Third Board of Appeal had to decide on the registrability of “the scent of raspberries” for “fuels, including motor fuels, particularly diesel as heating fuel, fuel and engine fuel” in Class 4. The Board rejected the applicant’s appeal to register the olfactory mark not on the ground that the mark was incapable of graphical representation, but on the ground that it was devoid of distinctive character.

11 On the issue of graphical representation, the Board held that:

[I]t is not impossible that in an exceptional case, a scent can be represented completely, clearly, precisely and objectively.

This is the case with “the scent of raspberries”, that is, the scent which emanates from this mostly red fruit … which has been gathered and cultivated since time immemorial. The scent of raspberries is unequivocal and precise. Admittedly … the scent of raspberries is weaker in the natural state than in a puree.

The scent of raspberries does not remain vague and imprecise, however, and it is always recognisable by reference to the fruit. There is no room for a subjective interpretation on the part of the consumer or the Office. A description of the sign in words constitutes sufficient representation to send a clear and unvarying message, since the scent of raspberries is a unique, pure smell.27

12 The Board sought to distinguish John Lewis28 (cinnamon “cannot be recognised by the consumer until he has directly experienced this scent or its aroma”), Senta29 (“the smell [of fresh cut grass] does not come from the grass itself, the type of which is unspecified, but is

affected by the cutting, which moreover must be fresh, ie, have been done within a short, but unspecified period of time”) and Sieckmann v Deutsches Patent — und Markenamt30 (“the smell [described as balsamically fruity with a slight hint of cinnamon] is not obvious to the consumer, since the smell must first be produced with a mixture of different constituents”).31

13 The Board cursorily dismissed the argument that the smell might be perceived differently due to factors such as the concentration and quantity, the temperature, the carrier material and also subjective factors such as memories. It held that such an argument can be applied to any type of trade mark, and that this did not matter so long as the trade mark itself is clearly represented in the Register.32

14 It is submitted that the Board in Myles overlooked the importance of the need to have a consistent and objective perception of a scent. In opposition and infringement proceedings, the identity or similarity of two competing olfactory marks will not be determined solely upon their written descriptions, otherwise it will lead to an absurd scenario whereby any determination on the identity or similarity of competing marks will hinge on their written descriptions and not on the underlying scents that constitute the marks. Thus, the determination will have to take into account the scents of the competing goods. As the scent of raspberries varies according to factors such as concentration and temperature, it is impossible then to decide upon the single and objective standard by which the scent is...

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