The role of a trademark can generally be accepted as a two-way function of protecting the individual identity of a product by making it distinguishable from others. With the continued increase in number of competing products in markets, the quest for each trademark of a product to be distinguishable has lead to the birth of many unconventional trademarks. Trademarks like shape, sound and smell among others keep pushing the boundaries of the law. The argument which makes a tempting case for a smell to be accepted as a trademark is that of distinguishability. As smell is scientifically accepted as the part which is retained by the human memory for the longest duration[1], hence it by itself makes a case for smell to be trademarked to protect the identity uniquely associated therewith.

Two important factors need to be considered while determining the acceptability of sound mark[2]:

1. The smell should serve the purpose of making product distinctive and not be the product itself.
2. The smell should not be a derivative result of nature of goods itself. (Ex- an orange drink cannot claim a unique tangy orange smell.)

The perplexing question with regards to the acceptance of sound marks in India comes in form of their inability to be graphically represented. Section 2 (zb) of the Trade Marks Act, 1999 as, “trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.[3]” While the Trademark Rules in 2017 proposed a way[4] to for sound marks to be graphically presented, therefore giving wider acceptability to them, the same unfortunately is not at all feasible with smell marks. A smell unlike sound cannot be graphically presented, neither can it be stored and retained for long physically, although the chemical formula for the components of smell can be provided with but the same would not be constituting odour. The same had been held in the landmark ECJ judgement of Ralf Sieckmann v. Deutsches Patent und Markenam.

Although the discourse about acceptance of olfactory marks remains largely an academic discussion as one application has been filed before the Registry of Trademarks[5], but if there were to a viable solution to the debate, it would have to be the removal of compulsory graphical representation of a trademark. The EU Trademark Directive in 2019[6] had removed the criterion of graphical representation of trademark which in turn has given more flexible approaches to be seen while considering a valid submission of an olfactory representation, a similar kind of approach will have to be seen in India to come a step closer to the era of olfactory trademarks.

By

Ranjul Malik

1st Year B.A.L.L.B

Army Institute of Law, Mohali.

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[1] WIPO Magazine, Smell, Sound and Taste- Getting a Sense of Non-Traditional Marks, February 2009

[2] Id

[3] The Trade Marks Act, 1999, § 2(zb).

[4] Trade Marks Rules, 2017, Rule 26.

[5]  Harshada Wadkar, Non-Conventional Marks, Lexology (March 29 2019)

[6] Directive (Eu) 2015/2436, European Parliament And The Council Of The European Union