Sorry, Not All Roses Smell The Same: A Critical Look At The Decision In Sumitomo's Smell Mark Application

Smell is one of the most powerful and primal senses. Many brands invest heavily in creating and maintaining unique smells as part of their products or services to foster positive associations with their brands. While in many instances, smell is a function of the nature of the concerned product or service, in some cases they are introduced externally for specific reasons. For example, the Bengaluru International Airport has reportedly invested heavily in a signature fragrance called 'Dancing Bamboos' for Terminal 2 to create a calming and emotionally engaging atmosphere for passengers. Similarly, many pharmaceutical companies add specific smells to make their products more palatable for patients, particularly children, though the underlying chemical compounds may have a different smell or no smell.

Across the globe, there have been many attempts to monopolise scents through trade mark law. Smell marks or olfactory marks are generally considered as non-conventional trademarks and belong to a growing list that also includes sound and taste marks. On the other hand, word marks (for example, the word 'Tata') or logos (such as the two-tailed mermaid of Starbucks) are generally considered as conventional trademarks.

Through a decision released last week, the Controller General of Patents, Designs and Trademarks has allowed the grant of smell mark protection to a company named Sumitomo, which claims to have infused a rose-like floral fragrance into its tyres. While some lawyers and industry representatives have hailed the move as historic and progressive, the grant of this registration is a bad step on both legal and policy dimensions.

Legal background

Trademark law is territorial in nature, and the manner in which it operates differ significantly across jurisdictions. In the context smell marks, it is worth highlighting two major dimensions.

First, many jurisdictions mandate a strong graphical representation requirement, meaning that any trademark must be capable of being represented graphically. For example, 'capable of being represented graphically' is an integral part of the definition of trademark under the Trademarks Act 1999 in India. This requirement serves several important legal and policy functions under the trademark law.

Most importantly, it helps in defining with clarity and precision the boundaries of protection afforded under the law, for different stakeholders. For instance, in the absence of graphical representation requirement, it would be extremely difficult for trademark examiners to examine whether prior applications or registrations exist on the subject matter sought to be protected and maintain a precise register of trademarks. Similarly, for the competitors in the market, clarity and precision is important to better understand the rights vested in different parties, and even to avoid infringement of those rights. Unlike many of the other types of intellectual property like patents or copyright, it is also important to note that trademark protection can continue in perpetuity. This also means that any representation of the mark should be durable. Finally, the fact that graphical representation requirement also plays a major role in reducing subjectivity in the process of identifying and perceiving protected signs, is something that cannot be overlooked. It is for such diverse legal and policy reasons that the Court of Justice for the European Union, clarified through decisions such as Ralf Sieckmann v Deutsches Patent- und Markenamt and Shield Mark BV v. Joost Kist that to meet the legal requirements of graphical representation, a representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Second, in all the major jurisdictions, only marks that are distinctive, i.e., marks that are capable of distinguishing the goods or services of one proprietor from the other, will receive protection. Hence it is also important from a legal perspective to carefully analyse whether the concerned application has met the distinctiveness requirement. It may be added here that most jurisdictions do not protect smells that are attributable to the nature of the product.

Why the Sumitomo decision is problematic

As discussed above, graphical representation is an integral part of the Trademarks Act 1999 and India has not made any legislative changes in this regard. The Sumitomo decision is in effect subverting the legislative position.

For fulfilling the graphical representation requirement, the decision relies heavily on a submission by some researchers at IIIT Allahabad, and uses the following description for registration: “A complex mixture of volatile organic compounds released by the petals interact with our olfactory receptors, creating a rose-like smell. Using the technology developed at IIIT Allahabad, this rose-like smell is graphically presented above as a vector in the 7-dimensional space wherein each dimension is defined as one of the 7 fundamental smells, namely floral, fruity, woody, nutty, pungent, sweet and minty.” While such a description might be understandable for those in the scientific community, the approach overlooks the core function of the graphical representation requirement – i.e., giving clarity and certainly for all the stakeholders. It also fails to meet the legal standards of graphical representation under trademark law discussed above.

While some of the jurisdictions like the US may not have a graphical representation requirement in their law, and some of the jurisdictions like the EU may have made legislative changes to dilute the graphical representation requirement, it is worth re-emphasising here that the Indian law still demands graphical representation. The policy factors that drive the graphical representation requirement have also not changed. It is also worth emphasising here that the Intellectual Property Office and the Courts should be careful about blindly imitating approaches from other jurisdictions without recognising the basic differences in the legal framework and underlying policy considerations.

The decision of the Controller General of Patents, Designs and Trademarks in Sumitomo also overlooks the fact that non-conventional marks are not inherently distinctive. Their distinctiveness has to be established through robust empirical evidence. While it is possible that the smell of roses on tyres might acquire distinctiveness over a period of time, no part of the decision shows any empirical data on significant consumer recognition of the smell with the concerned product of the applicant within India.

Be careful about overstepping the boundaries!

Most importantly, this decision is a reminder on the need for ensuring that our statutory bodies should not assume the roles of legislature or judiciary. They are bound to operate within the framework of the relevant legislation, as clarified by the judicial decisions. If at all India has to make any changes in the position on graphical representation requirements, the Parliament should be the one initiating it. This will facilitate extensive consultations, including on potential public interest dimensions.

For example, diluting the graphical representation requirements for granting trademark monopolies for non-conventional marks like smell and taste can negatively impact public health. One just needs to imagine the consequences of granting monopoly protection to pharmaceutical companies over strawberry smell or banana smell in the pharmaceutical products category. Sadly, the Sumitomo decision overlooked such broader public interest dimensions and got carried away by the smell of roses on tyres!

[Arul George Scaria is a professor of law at the National Law School of India University. Views expressed are personal]