The scent of a trademark

India has accepted its first smell trademark, but can it guide consumers and enforce action against infringers?

Trademarks fall under the larger canopy of intellectual property laws. Each intellectual property law, traditionally, has different purposes to achieve. Copyright law is aimed to promote learning, patent law secures scientific invention, and trademarks have had an altogether different function to achieve – they are tools to help the consumer identify the source of a product.

It helps the consumer to differentiate one product from the other. In trademark protection, the consumer is the intended beneficiary. The consumer associates the brand with a specific quality and makes a choice based on its reputation.

Historically, names and labels of the business have functioned as their trademark. However, in the past few decades, brands have started adopting different strategies to market themselves, going beyond names and labels. Companies have used sound, colour, shape, or even smell to market their products. Names and labels fall under the category of conventional marks, while the others are categorised as unconventional marks.

India had taken the policy decision to protect both conventional and unconventional marks by signing the TRIPS agreement in 1994. In accordance with it, India introduced the new trademark law in 1999. While unconventional marks such as shape, sound or even colour marks gained acceptance, the scent marks have found it difficult to garner successful registration owing to the legal requirement of graphical representation. It is easier for a brand to graphically represent sound, colour, or shape; the same was not possible in the case of smell because of its transient nature.

The Indian trademark registry recently accepted the Japanese company Sumitomo Rubber Industries’ smell mark application for ‘floral fragrance of roses applied to tires.’ It was initially opposed by the registry for lack of graphical representation. The company has previously secured successful registration in various other countries. Sumitomo might have developed the reputation of a distinctive feature of rose-smelling tires abroad, but the application is filed on a proposed-to-be-used basis in India, signalling it is yet to be commercially used.

It was possible for the applicant to comply with the law because of a seven-dimensional scientific graphical representation developed by experts from IIT Allahabad. This is a pivotal moment in Indian trademark law, for the first time, a smell mark has garnered acceptance. The graph developed categorises smell into various characters such as fruity, woody, nutty, pungent, sweet, and minty. This move helped the Japanese company to comply with the statutory requirement.

The graph is not completely free from flaws; it gives a description of the smell, but does not represent the smell. The smell is subjective in nature, and humans perceive a smell based on their prior experience with it. A graphical representation of one mark might be similar to the graphical representation of another, but it may not be perceived in the same way by a human nostril.

The infringement fix

This application has helped India align with the TRIPS mandate to offer protection to unconventional marks. It complies with the literal requirement of the statute, but not its intended objective. The floral graphical representation is different from the audio file of a sound mark or the graphical representation of a colour or shape of a product. It does not replicate the scent of a trademark, but merely helps the trademark examiners to assess the application in front of them.

Would the graph penetrate the nostrils of an average consumer with imperfect reflection of memory is a question that remains unanswered. The trademark law’s position is not in the best interest of the consumer. Furthermore, a trademark registration enables the trademark owner to prosecute the infringers. In the case in hand, would Sumitomo be able to successfully prosecute the trademark infringers, if they utilise the sweet fragrance of roses on tires and beyond? The newly issued graph might not help the court in successfully differentiating one smell from the other.

This issue would have pronounced implications, especially in the perfumery industry and in the food industry, because the smell of the product/food item is a key marketing factor for these industries. The protection still does not give sufficient reasons for granting exclusive ownership over smell to an entity. The present smell mark might be a welcoming step for business entities and may raise hope to many more applicants to secure their trademarks, but does it effectively strengthen the trademark portfolio of a business and its ability to prosecute violators remains an important question.

(Sundar and Parimita are assistant professor and associate professor, respectively, at the KIIT School of Law)