Registrable trade marks: does it smell right to you?

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Registrable trade marks: does it smell right to you?

09 Feb 2018

The requirement for a registrable trade mark to be capable of being represented graphically has, hitherto, posed an impediment to registration of smell marks. The seven criteria for representing any mark – requirements of precision, self-containment, easy accessibility, intelligibility, durability and objectivity (known as the Sieckmann criteria) underlined the difficulty.

However, it now seems that the protection of smells as trade marks in the UK and the EU is more likely. Article 3(b) of the new recent Trade Mark Directive (Directive (Eu) 2015/2436 of the European Parliament and of The Council of 16 December 2015) provides:

“A trade mark may consist of any signs…provided that such signs are capable of…being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”

This fundamental change does not appear to have been given anything like the publicity it warrants given the possibilities it opens up.

Opponents of registration for olfactory marks argue that, practically speaking, this change is a difference that makes no difference. Intrinsically, smell is too imprecise a parameter for the Sieckmann criteria (which are embodied in the new Directive) ever to be met.

This change is of considerable commercial significance. The use of such a mark would generally be to create an olfactory association with a product not related to its smell. A seminal example would be Playdoh. It had an extremely distinctive odour, creating a powerful association in the minds of those who used it, yet that odour had nothing at all to do with the nature of the product. Thus, a tool manufacturer might seek to benefit from a similar association by greasing its tools with a substance carrying a distinctive odour so that their smell clearly identifies them to consumers as produced by a particular manufacturer.

Article 4(1)(e) of the Directive states that “signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves;…. (iii) the shape, or another characteristic, which gives substantial value to the goods;” shall not be registered.
Thus, products that, by their very nature, carry an odour – and particularly where (such as in the case of perfumes or fabric conditioner) that odour gives products any of their intrinsic value or purpose – will not likely be registrable. That prohibition aside, the removal of the requirement for a graphical representation is unlikely to be sufficient to enable odours such as Chanel No. 5 to be represented in the required manner (i.e. in accordance with the Sieckmann criteria) and thereby become registrable. By contrast, odours having no relationship with the nature of the goods (e.g. lemons as an odour mark for hand tools) may well be registrable as signs of origin.

It follows that a person who is the first to register a distinctive smell unrelated to the product may obtain a significant monopoly. Whether or not this is a good thing may be open to debate but there is little doubt this is an area into which the law of trade mark is moving.

For further information please contact a member of our IP team on 0161 834 3434 or contact us.

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