By Radhika Niphadkar 
It is estimated that a human nose can detect up to 1 trillion odours. Where the brain memory fails, the olfactory memory takes the lead. Olfactory memory is attached to an olfactory bulb which is the brain’s small centre, which immediately triggers detailed emotions and memories based on smells as we perceive them. Rarely do we find that people have inability to smell. However, the one thing about smells is that, they are highly subjective. But, could brands use this subjectivity to their advantage by creating experiences through smells? If marketed correctly, smells could be a huge selling point for companies to differentiate their products and leave a lasting memory in the minds of consumers. As the world evolves, companies align and seek tighter protection for their brands. Protection for non-conventional trademarks, smell marks in particular, is not only the solution to competition, but has become an essential from the standpoint of innovation. This paper focuses on how this protection can be brought within the ambit of Indian Legislation and how the technical hurdles coming in the way can be eliminated.
With the aim of addressing the cut throat competition that the businesses today have to face, a way is needed through which the companies get to establish their own individuality, and mark a special place in the minds of their customers. An effective way to do that is to seek protection for their non-conventional trademarks. Through non-conventional trademarks, organisations would get an opportunity to target a market, which is able to relate to their brand in a more efficient manner. This paper proposes to firstly, address the inclusivity of the smell marks. An assessment is done to know the position on registrability of such smell marks in countries outside India. The paper also provides a solution for how smell marks can be brought within the registrability spectrum of India, followed by the concluding remarks.
Inclusivity of Smell Marks
The concept of Trademark functions with a similar aim of differentiation, and claiming ownership for such differentiation. A Trademark can be as varied as a word, name, symbol, device, or any combination thereof, for identifying and distinguishing the products of one from that of another. However, this traditional definition got expanded as the magnitude and operations of businesses widened and started displaying innovation. For instance, the Indian Trademarks Act 1999 defines a Trademark as, “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” It is due to such inclusive nature of the definition, that non- conventional trademarks, originating from shapes, sounds, smells, tastes, and textures have come to surface. If the above definition is broken down, for a mark to gain registration, two boxes need to be ticked. First, the mark needs to be graphically representable and second, it needs to be distinctive. Hence, for non-obvious marks such as smell marks in the present case, both the tests have to be satisfactorily cleared. This is where the problem arises. Due to non-visual nature of a smell mark, its graphical representation becomes difficult. To counter this, in Ralf Sieckmann v. German Patent Office, the applicant company decided to describe the fragrance as a means of graphical representation as, “balsamically fruity scent with hint provided of cinnamon.” However, the registration was denied by the European Court of Justice on the grounds that mere graphical representation is not sufficient, but the second test also needs to be cleared, i.e., the mark must be complete, clear, and intelligible to those having an interest in inspecting. This came to be known as the ‘Sickermann’s test’, and became a precedent for rejection of smell marks in Europe. The US Trademark Trial Appeal Board (TTAB) held that, registration for a smell can only be granted for a product for which fragrance is not the inherent characteristic, as in case of perfumes, deodorants, etc., but is an additional feature provided by the seller to make the product distinctive and has acquired a secondary meaning by itself without being utilitarian. This technique was adopted in the case of Re. Clark, where the applicant scored registration of ‘a high impact, fresh floral fragrance reminiscent of Plumeria blossoms’ for sewing thread and embroidery yarn.
Position in India
In India, seldom does the Indian Trademark Office recognise the graphicness and distinctiveness of a non-conventional mark. With Yahoo’s yodel and ICICI’s jingle, graphical representation was still achievable in the form of musical notes. Affirmation for the same can be seen in the Draft Manual published in 2015 by the Indian Trademark Office, which has assigned certain attributes to be fulfilled for registration of sound marks. But with odour marks, the Indian Trademark Office has still not found a representation suitable to their expectations. The draft manual has clearly denied the registration of smell marks due to their inability of being represented graphically. To overcome a similar difficulty, the Australian Trademark Office came up with verbal description of the scent, which could allow an ordinary person to identify and associate the smell with the product. The description should not only include what the smell is, but also how the applicant proposes to use that smell in pursuance with their products.
In India however, no such steps have been taken either by the Trademark Office or by the applicants. Smell as mentioned above is one of the strongest senses of the body. For the visually or audibly impaired, smell could be the point of association with the product. By obtaining registration over smells, companies can reach out to newer markets, increasing benefits for themselves and for a new segment of purchasers. Such registrations could be sought out mainly by FMCG Companies. Most of us today recognise the milky smell of Johnson & Johnson’s baby soaps, or the herbal fragrance of Medimix soap, or even the sweet vanilla smell of Mac Cosmetics’ lipsticks. If these companies apply for registration, the first difficulty to be faced by them would be of describing the fragrance in an associative yet simple fashion. They would also have to ensure that the description should not just talk about a generic fragrance like vanilla in case of Mac’s lipsticks, as that would make the description non-distinctive. Further, if it is a perfume brand, would it be allowed to register their fragrances is a matter of controversy, as perhaps an attempt to describe the fragrance would be considered a descriptive activity, thus making the mark non-distinctive and functional, as in the unsuccessful case of Chanel No. 5 Perfume.
However, it is worth considering, that is the definition of descriptiveness used for conventional trademarks, the same for non-conventional? Selling apples under the brand name ‘Apple’ is definitely descriptive in nature and thus barring all other apple sellers from carrying out their business or entitling the registered ‘Apple’ to sue for infringement. But, does this hold true in case of odour marks? Denying registration of fragrances produced by Perfume Companies, opens floodgates for copies leaving any legal recourse out of question. Similarly, if logos can be registered for creating economic and utilitarian value for the brands, so should non-conventional marks be. For instance, people buy Nike T-Shirts for the purpose of flaunting the swoosh mark. Hence Nike’s branding is based on the swoosh mark which naturally has economic gains attached to it. Like conventional trademarks, smell marks can also serve the purpose of distinction and hence companies should be allowed to gain monetary advantage out of the same. Since India does not have any formal legislation speaking about smell marks, it would be imperative to include such provisions within the ambit of Indian laws.
Following essentials could be enumerated for acquiring registration of a smell mark-
- Associative nature of the smell with the product by an average consumer.
- Breaking down the smell for purpose of graphical representation based on its chemical architecture, its top notes, heart notes, and base notes.
- Graphical representation should be clear and concise so as to be legible to an average consumer.
- The fragrance should not be generic in nature. For example, lemon for dishwashing soaps. Similarly, it should not be a fragrance arising out of a natural phenomenon, for example, petrichor (earthy scent produced when rain falls on dry soil) or the smell of camp fire.
Hence, in conclusion it can be said that smells play a very important role in every individual’s life. Although its registrability is presently questionable in our country due to difficulties arising out of its arbitrariness and lacuna present in the Indian laws for its protection, but these difficulties can surely be eliminated in the manner mentioned above, thus facilitating a path towards progress and evolution.
 Student of MBA (Law), School of Business Management, NMIMS, Mumbai
Helen Briggs, Nose can detect 1 trillion odours, (Mar. 20, 2009, 14:56 PM), https://www.bbc.com/news/health-26638085.
Genetic and Rare Diseases Information Centre, Congenital Anosmia, Approximately 1/10,000 have anosmia, Jun. 9, 2015, 15:02 PM), https://rarediseases.info.nih.gov/diseases/9486/congenital-anosmia.
 Sec. 2(1) (zb), The Trademarks Act 1999, No. 47, Acts of Parliament, 1999 (India).
 Ralf Sieckmann v. German Patent Office Case C-273/00.
 Re. Clarke, 17 U.S.P.Q.2d 1238 (1990).
 Pg. No. 87- A Manual of Trademarks, Practice and Procedure, http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf.
 IP Australia, Trade Marks Office Manual of Practice and Procedure, http://manuals.ipaustralia.gov.au/trademarks/Part_21_Non-traditional_Signs/21.7_Scent_trade_marks.htm.