A CRITICAL ANALYSIS OF FRAGNANCE UNDER

TRADEMARK – A CASE OF NON-TRADITIONAL

TRADEMARK

“Submitted in partial fulfilment of

Internal component for the award of degree
B. Com., L.L.B (Hons.) for the subject”

INTELLECTUAL PROPERTY LAW

BY
S. RAAGAVAN (BC0180039)
4th year B. Com., L.L.B (Hons.)

Under the guidance and supervision of

MS. PREETHAM BALAKRISHNAN
Assistant Professor of Law

“TAMIL NADU NATIONAL LAW UNIVERSITY,

TIRUCHIRAPPALLI”
 DECLARATION

“I, S. RAAGAVAN (BC0180039) do hereby declare that the project entitled

“CRITICAL ANALYSIS OF FRAGNANCE UNDER TRADEMARK – A CASE OF

NON-TRADITIONAL TRADEMARK” has been originally carried out by me under the

guidance and supervision of, MS. PREETHAM BALAKRISHNAN, Tamil Nadu National

Law University. This work has not been submitted either in whole or in part of any Degree /

Diploma at any University.

PLACE: TIRUCHIRAPPALLI

DATE: 05/11/2021
 TABLE OF CONTENTS

1. INTRODUCTION

2. AN ANALYSIS OF NON-TRADITIONAL TRADEMARKS

3. LEGAL POSITION OF SMELLMARKS IN OTHER JURISDICTIONS

4. LEGALITY OF SMELLMARKS IN INDIA

 INTRODUCTION

The inception of life began when the Earth cooled down and the ambiance was
conducive to support life forms and the last extinction event led to the rise of one specie –
Homo Sapiens. This social specie collaborated with other compatriots to form groups which
led to the foundations of civilization. Civilization amplified man-made concepts and way of
life such as trade, culture, religion, politics and other elements. With respect to Trade, Arts
and Literature, Intellectual property regime was founded to recognise and appreciate for the
developments in the respective areas, which provided exclusive economic rights so as to
encourage others to participate in the process of innovation and creativity in the respective
fields. One of the branches of the Intellectual Property regime is Trademark. In layman’s
understanding, Trademark is a distinct identity of a trading entity which distinguishes from
other trading entities, which benefits the consumers or clients or customers. This concept is as
old as human civilization, with the prime example of Roman civilization where the
craftspeople engraved their name or a symbol on the item they made such as tableware,
brickwork and roof tiles, decorative vases, gravestones, lead slingshot ammunition and
others. Similar practise was also observed in the Chinese and Egyptian civilizations. In legal
sphere, the first Trademark law was enacted in England by King Henry III, which was the
Bakers Marking Law in the year 1226, which mandated all bread makers to imprint a mark
on the bread which was sold. Subsequently, every country created their own legal system
governing Trademark within their political boundaries, but in conformity to the TRIPS
Agreement.

The contemporary world underwent a series of significant changes in all spheres of

life and the Intellectual Property regime is no exception. However, there is still an unresolved
area in the Intellectual Property regime pertaining to the advent of Non-Traditional or
Unconventional Trademarks. Traditionally, Trademarks are granted to words, names,
symbols or signs for identification of goods or service by consumers and this was well
explained in the case of Zippo Mfg. Co. v. Rogers Imports, Inc1. In the contemporary world,
customers or consumers pay attention to the minute details, which includes even smell, touch
or sound, which leads to the need for special protection under the Intellectual Property
regime. The jurisprudence regarding the same is developing, however the same suffers from
lack of uniformity and absence of international standards.

1
216 F. Supp. 670
This project strives to understand the concept of Non-Traditional Trademarks with special
reference to Smell Marks, its evolution, the laws governing the same in different jurisdictions
around the world and the challenges of registering Smell Marks.

RESEARCH OBJECTIVES:

 To understand the constituents of Trademark under the Indian legal system.

 To analyse the Conventional and Non-Conventional Trademarks.
 To understand the challenges behind Non-Conventional Trademarks.
 To study the legal system regarding Smell Marks in different jurisdiction.
 To analyse the possibility of the inclusion of fragnance under the Indian legal system.

RESEARCH QUESTIONS:

 What are the constituents for Trademark?

 What led to the advent of Non-Traditional Trademarks?
 What is the legal position regarding Smell Marks in the United States of America,
European Union and United Kingdom?
 What are the difficulties with respect to the legality of Smell Marks in India?

RESEARCH METHODOLOGY:

This project titled, “Critical Analysis of Fragnance Under Trademark – A Case of

Non-Traditional Trademark”, is Doctrinal research which will refer to legal articles, case
laws and books to understand and analyse the concept of Non-Conventional or Non-
Traditional Trademarks.

REVIEW OF LITERATURE:

 Abhijeet Kumar, “Protecting Smell Marks: Breaking Conventionality” 21 Journal of

Intellectual Property Rights pp. 129-139 (2016):
This article elucidates on the concept of Trademarks, its history and the evolution of
the Non-Traditional or Unconventional Trademarks, with special reference to Smell
Marks. The article also deals with the International developments in the area of Smell
Marks and explains the legal position of Smell Marks in the United Kingdom,
European Union and the United States of America in detail. The article also analyses
the challenges in the Indian legal system regarding the inclusion of Smell Marks.
 Lisa P. Lukose, “NON-TRADITIONAL TRADEMARKS: A CRITIQUE” 57 Journal of
the Indian Law Institute pp. 197-215 (2015):
This article elucidates on the concept of Non-Traditional Trademarks, its evolution
and development in the jurisdiction of United States of America and the European
Union such as registration and others. The article also addresses on the issue of lack
of uniformity in the international legal plane and putforths the urgent need for the
same. The article covers Smell Marks, Sound marks, Taste Marks, Shape Marks and
Colour Marks, out of which focus will lie on the first kind of Non-Traditional
Trademark.

 David Vaver, “UNCONVENTIONAL AND WELL-KNOWN TRADE MARKS”

Singapore Journal of Legal Studies pp. 1-19 (2005):
This article solely focuses on the European Union’s legal system and the United
States’ legal system revolving around the issue of Traditional and Non-Traditional
Trademarks. The article discusses about Smell Marks, Colour Marks, Shape Marks
and Sound Marks. The author discusses on the aspect of “Expansionism” which plays
a critical role in the rise of Non-Traditional Trademarks around the world.

 Catherine Seville, “Copyright in Perfumes: Smelling a Rat” 66 The Cambridge Law

Journal pp. 49-52 (2007):
This journal discusses about the inception of fragnance in the world, its importance in
trade and more importantly the legal framework to regulate the same. The journal
briefly discusses about the legal framework of the European Union and proceeds to
two cases decided in France and Netherlands which brought ‘Smell’ of perfume under
the purview of Copyright. The author criticizes the same with reasoning.

 Tanusree Roy, “Registrability of Smell Mark as Trademark: A Critical Analysis” 41 JCIL

pp. 121 – 132 (2011):
This journal primarily focuses on the aspect of Registration with respect to Smell
Marks. The journal refers to the legal framework of the United States of America
which has witnessed the registration of Non-Traditional Trademarks. The journal also
analyses the need to adopt an express legal policy in the Indian Intellectual property
regime and structure. The author also analyses the challenges faced in the process of
registration with respect to Smell Marks.
 AN ANALYSIS OF NON-TRADITIONAL TRADEMARKS

Before diving into the concept of Non-Traditional or Unconventional Trademark, one

must understand the legal definition of ‘Trademark’. The TRIPS Agreement states that “any
sign, or any combination of signs, capable of distinguishing the goods or service of one
undertaking from those of other undertakings, shall be capable of constituting a Trademark” 2.
A plain reading of Article 15(1) of the TRIPS Agreement would infer that the provision is
inclusive in nature due to the presence of the word ‘including’. There also exists no elements
which is expressly omitted in the respective provision and the aspect of registration is left to
the discretion of member-states with respect to elements or signs, which could not be
inherently differentiated, with the sole condition of “visually perceptible”. Therefore, Smell
Marks can be legally acknowledged and recognised as Trademark and is registrable, provided
it satisfies the condition aforementioned.

The ultimate rationale behind the legal protection of Trademark is to safeguard the
public from deceit and fraud indulged by Trader(s), who use registered Trademark of the
other Trader for the sale of counterfeit products 3, which was also discussed in the case of
B.V.D. Co. v. Kaufmann & Baer Co4. Intellectual Property law regime is an enlarging scope
of protection and subject-matter, with the question of, what is protected, how deep protection
should run, and where and against whom should the protection run5. This “Expansionism”
force infused another equivalent rationale to Trademark protection along with the ‘protection
of consumer’, which is to benefit the Producers for competing with other players in the same
industry6, by the advent of 21st century, so as to invigorate investment in branding and
advertisement which presumably necessitates an ex-ante protection. Smell is a distinct sense,
with respect to the human anatomy, since it does not require compos mentis to stimulate a
response, which is unlike the other four senses. Various scientific studies which strive to
unravel the effect of smell on human minds have discovered that, if a person is placed with
two identical objects, the person would choose the one which emits or contains a pleasant
smell.

2
TRIPS Agreement, 1995, Article 15(1), World Trade Organization
3
Bently Lineol and Sherman Brad, Intellectual Property Law 52 (New York: Oxford University Press 2001)
4
116 A. 508 (1922)
5
Mark Lemley, The Modern Lanham Act and the Death of Common Sense 108 Yale L.J. 1687, 1687(1999)
6
David Vaver, UNCONVENTIONAL AND WELL-KNOWN TRADE MARKS 69 Singapore Journal of Legal Studies 1,3
(2005)
 In the international plane, the Madrid Agreement and Madrid Protocol dealt with the
process of registration of Trademarks, but the aspect of subject-matter was not discussed in
the same. Another international tool, the Paris Convention came into picture whose sole
motive is to safeguard the industrial property including Trademark, however it did not
elucidate on the aspect of definition and subject-matter of ‘Trademark’, therefore enlarging
the scope for embracement of unconventional Trademarks into the Trademark regime. Also,
the Paris Convention gave discretion to the member-states, and one provision reads as
follows: “The conditions for the filing and registration of Trademarks shall be determined in
each country of the Union by its domestic legislation” 7. The only international document to
prohibit Smell Marks and Sound Marks is the Trademark Law Treaty, 1994 which states,
“This Treaty shall not apply to hologram marks and to marks not consisting of visible signs,
in particular, sound marks and olfactory marks”8. Finally, the TRIPS Agreement
uniformalised Intellectual Property regime including Trademark and Article 15(1) does not
expressly bar unconventional Trademarks. Thus, we can infer that there exists no intention or
willingness to bar unconventional Trademarks9.

After all this discussion, one must understand that Non-Traditional Trademarks are
not to be frowned upon but must be welcomed as the former provides more benefit than the
latter, such as branding and advertising10. The Non-Traditional Trademarks can be divided as
visibly perceivable and visibly non perceivable, in which Smell Marks fall in the latter. After
a clear discussion, it is pertinent to move into the legal framework of Smell Mark sin various
jurisdictions to shed some light, for more clarity. This led us to a conclusion, in the
contemporary competitive world, every area of opportunity is tapped to ensure survival and
this statement has a direct and immediate effect on products such as Soap, Perfumes, Room
Fresheners and others. Thus, the need to study Smell Marks. The degree of legal
developments of Smell Marks is comparatively more in the developed nations 11, than in
developing nations and hence this project will focus on the former kind of states.

7
Paris Convention for the Protection of Industrial Property, 1883, Article 6(1), Paris
8
Trademark Law Treaty, 1994, Article 2(1)(b), Geneva
9
Abhijeet Kumar, Protecting Smell Marks: Breaking Conventionality 21 Journal of Intellectual Property Rights
129, 131 (2016):
10
Lisa P. Lukose, “NON-TRADITIONAL TRADEMARKS: A CRITIQUE” 57 Journal of the Indian Law Institute
197,205 (2015)
11
Mohit Joshi, Smell Mark: A New Era 3 International Journal of Law Management & Humanities 607,
622(2020)
 LEGAL POSITION OF SMELLMARKS IN OTHER JURISDICTIONS
UNITED STATES OF AMERICA:
The capitalist nation’s rationale for Trademark is to encourage more competition
among the competitors12. The Lanham Act is the statute which provides the legal framework
for Trademark, wherein the term is defined as, “any word, name, symbol or device, or any
combination thereof: (1) used by a person, or (2) which a person has a bona fide intention to
use in commerce and applies to register established by this Act, to identify and distinguish his
or her goods, including a unique product, from those manufactured or sold by others and to
indicate the source of the goods, even if that source is unknown” 13. The definition is inclusive
in nature, and the terms “symbol” and “device” was exclusively retained by Congress so as to
include sounds, scents and shapes under the US Trademark regime14. The United States is
more welcoming, with respect to Unconventional or Non-Traditional Trademarks and the
cases of Two Pesos Inc. v. Taco Cabana Inc15 and Qualitex Co v. Jacobson Products Co16,
wherein in the latter, Supreme Court stated, “almost anything at all that is capable of carrying
meaning” can be included under Trademark.

Smell Marks were first recognized and allowed by the United States’ Courts, in the
case of In Re Celia Clarke17 by TTAB, wherein the smell of “a high impact, fresh fragrance
reminiscent of Plumería blossoms” for sewing thread and embroidery yarn was permitted. In
this case, the Tribunal stated that the scent had to be distinctive of the product and it could
not be utilitarian or functional. The TTAB’s rationale was that, Celia Clarke was the sole
manufacturer of yarn which is associated with scent and Celia Clarke proved that the scent
was recognised by consumers as an indicator of origin. This legal position, with respect to
Smell Marks, was affirmed in the case of Qualitex Co v. Jacobson Products Co. However,
Smell Marks are not popular in the United States as only a handful have applied for the same
such as corporate entities such as Verizon, Grendene, Eddy Finn Ukulele Co., Hisamitsu
Pharmaceutical Co. Inc and Lactona Corporation, who have applied and registered for scents

12
Supra note 9
13
The Lanham Act, Section 45, 1946 (United State of America)
14
Vatsala Sahay, Conventionalising Non-Conventional Trademarks of Sounds and Scents: A Cross-Jurisdictional
Study 32 NLS 128, 133 (2019)
15
505 US 763 (1992
16
514 US 159 (1995)
17
USPQ 2d 1238 (1990)
associated with their products. The only condition for registration is a description of the
scent.

EUROPEAN UNION and UNITED KINGDOM:

Trademark in EU is regulated by Harmonization Directive, 1989 and Community

Trademark Regulation, 1993, and the definition of ‘Trademark’ is mentioned in the latter
(Article 4) which is similar to Lanham Act. In the UK, Trademarks are regulated by way of
Trade Marks Act, 1994 is identical to the EU counterpart. Similar to USA’s law, the
definition is similar and Functionality Doctrine is applied, by which features of a product that
carry the nature of being a function of it, are not eligible for being protected under trademark
law18.

“After the legal framework, one must analyse the precedents. In 1994, the globally
well-known brand Chanel applied for the registration of their signature perfume fragrance
product, ‘Chanel No. 5’ based on its fragrance. This application was struck down by way of
the Functionality Doctrine. In the same year, Sumitomo Rubber Co. successfully registered a
smell mark for their products of automobile tires by describing the mark in their application
as “floral fragrance reminiscent of roses as applied to tyres”. In the case of Vennootschap
onder Firma Senta Aromatic Marketing v. Office for Harmonization in the Internal Market 19,
the Board of Appeal allowed the registration of “the smell of freshly-cut grass” as a
Trademark for tennis balls. However, this rationale was not followed in John Lewis of
Hungerford Ltd.'s Trademark application and Myles Ltd’ Trademark application by stating
lack of distinctiveness, which is in contrary to the Vennootschap case20. Therefore, UK legal
framework necessitates a detailed and clear description, which clears the distinctiveness test.”

“The prominent case of Ralf Sieckmann v. Deutsches Patent und Markenamt21

changed the jurisprudence of Smell Marks, where the Applicant represented the mark’s scent
a verbal description, a chemical formula and the submission of a specimen of the smell. The
European Court of Justice stated that the graphical representation must be “clear, precise,
self-contained, easily accessible, intelligible, durable and objective”, to reject the application
for granting Trademark. After this ruling, the degree of distinctiveness, originality, accuracy

18
Harsh Pati Tripathi, Potentiality of ‘Smell’ as a Trademark and its limitations 54 NAL 22, 25 (2007)
19
Case R 156/1998-2
20
Sankalp Malik, Property Rights Over Fragrances, Smells and Perfumes Protecting Your Aroma Creation
Against Competitive Imitation & Registering Scents as Community Trade Marks 4 Journal of Legal Studies and
Research 338, 344 (2015)
21
C-273/00, European Court of Justice
and uniqueness has become the highest in the cases of olfactory marks. However, the ECJ did
not state what are necessary for Smell Mark acceptance.”

OTHERS:

Australian courts have similar stand on Unconventional Marks which follows the
Sieckmann test while considering the non-traditional marks. Even though the definition of
‘Trademark’ in Australian Trademark Act expressly includes shapes, colours, scents and
sound, it is subject to the graphical representation of the mark. Scent marks are capable of
being registered under Section 17 of the Trade Marks Act 1995. As per the Trademark Law
in China, Smell Marks cannot be registered as a trademark due to the lack of visible
representation, but contrastingly, Hong Kong Trademark Ordinance allows registration of
smell marks, and the IP department of Hong Kong22.

“Apart from protection under Trademark, in certain jurisdictions, scent is protected

under Copyright23. In the case of L'Oreal v. Bellure24, Cour d'Appel de Paris ruled that smell
can be protected under Copyright by stating that the French Intellectual Property Code does
not exclude works which are accessed by smell, and that Copyright protects the rights of
authors in all works of the mind, whatever their type, form expression, merit or purpose.
However, this position of law was overruled in the case of Bsiri-Barbir v. Haarmann &
Reimer Civ.25. The Netherland Supreme Court in the case of Kecofa v. Lancdme26 ruled that
smell can be brought under the ambit of Copyright and stated that what was significant was
whether the work was perceptible to humans, possessed an original character, and bore the
personal stamp of its creator. An important point to note from this case is that, the Supreme
Court stated that it made no difference that the ability to distinguish scents differed from
person to person, since evidence of infringement could be collected by chemical analysis and
by survey.”

22
Supra Note 18
23
Catherine Seville, “Copyright in Perfumes: Smelling a Rat” 66 The Cambridge Law Journal 49,50 (2007)
24
[2006] E.C.D.R. 16
25
[2006] E.C.D.R. 28
26
[2006] E.C.D.R. 26
 LEGALITY OF SMELLMARKS IN INDIA

“Unlike the case in US and EU, very few unconventional marks have received
registration in India. Nonetheless, unlike the Trade and Merchandise Marks Act of 1958, the
Trade Marks Act of 1999 (the Act) and the Trade Marks Rules of 2002 do refer to non-
conventional trademarks.38 Another interesting document which needs to be referred to is the
Draft Manual for Trademark Practice & Procedure (Draft Manual). A reading of Sections
2(1) (zb)41 and 2(1)(m) of the Act shows that the definition of “Trade Mark” has been
widened to include shapes, packaging and combination of colours. As specified in the
Manual27, this is an inclusive definition including any mark as long as the mark is capable of
being represented graphically and capable of distinguishing the goods or services of one
person from that of the others. Nonetheless, it has been stated that colours, shapes, sounds
and smells will require “special consideration” during registration. In the context of Smell
Marks, the Registry has again directly applied the Sieckmann test, stating that though smells
are registrable, the fulfilment of the graphical representation criteria becomes difficult post
the Sieckmann holding. It is disappointing to note that the Registry has not suggested any
alternative method of graphical representation in spite of stating that ‘smells’ are registrable.”

“After an analysis of the legality of Smell Marks in different jurisdiction around the
world, it is evident that Smell Mark registration is in its nascent stage which faces the
difficulty imposed by the condition of ‘graphical representation’. In this contemporary world,
technology can be used to create a uniform system for smell analysis, which would vastly
help in registration of Smell Marks. For a long time, scientists attempted to create a unified
odour system which would help to categorize smells and one of the first systems was
developed by the Swedish taxonomist, physician, and zoologist Carl Linnaeus and it included
seven categories of smells28. Thus, it is high time to create a uniform system for smell.”

27
See Section 3
28
Olga Morgulova, Non-traditional Trademarks 72 IPJ 1, 15 (2011)
 BIBLIOGRAPHY

 Abhijeet Kumar, “Protecting Smell Marks: Breaking Conventionality” 21 Journal of

Intellectual Property Rights pp. 129-139 (2016).
 Lisa P. Lukose, “NON-TRADITIONAL TRADEMARKS: A CRITIQUE” 57 Journal of
the Indian Law Institute pp. 197-215 (2015).
 David Vaver, “UNCONVENTIONAL AND WELL-KNOWN TRADE MARKS”
Singapore Journal of Legal Studies pp. 1-19 (2005)
 Catherine Seville, “Copyright in Perfumes: Smelling a Rat” 66 The Cambridge Law
Journal pp. 49-52 (2007).
 Olga Morgulova, “Non-traditional Trademarks” 72 IPJ pp.,1, 38 (2011)
 Sankalp Malik, “Property Rights Over Fragrances, Smells and Perfumes Protecting Your
Aroma Creation Against Competitive Imitation & Registering Scents as Community Trade
Marks” 4 Journal of Legal Studies and Research pp., 338 - 361 (2015)
 Harsh Pati Tripathi, “Potentiality of ‘Smell’ as a Trademark and its limitations” 54 NAL
pp., 22-31 (2007)
 Vatsala Sahay, Conventionalising Non-Conventional Trademarks of Sounds and Scents: A
Cross-Jurisdictional Study 32 NLS pp., 128-152 (2019)
 Mohit Joshi, “Smell Mark: A New Era” 3 International Journal of Law Management &
Humanities pp., 607-631(2020)