Scent presents a new opportunity for IP registration

11 Dec 2017 , 11:25pm

A possibility that scents could be trade marked opens up a number of possiblities for companies, says CĂ©line Bondard of Cabinet Bondard.

Registering a scent

Is it possible to register a scent? A new directive has opened up the possibility that scents could be trade marked. In the directive 2015/2436 and regulation (UE) 2015/2424), the European Parliament and Council have removed the requirement for graphic representability of trademarks to be deleted, thus paving the way for other identification systems. This so-called Trade Mark Reform Package could see an overhaul in European trade mark law as it marks a transition from a description-based protection to one that calls on all our senses: sight, hearing, taste and touch.  

I. From a “descriptive” trademark… 
 
The requirement of “graphic representability” 

Until recently, the previous European directive (2008/95/CE) defined a trade mark as “any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings” (article 2). Until now, there has been no law or regulation forbidding a sound, a scent, a taste or a texture from being registered as a trade mark in France. However, the graphic representability was, to this day, a requirement for the existence of a trade mark. 

Let us take smell as an example: a relatively recent marketing trend consists in well-known brands diffusing recognisable scents in their outlets. How could such a scent (from a perfume, a candle, or even a tyre) be registered as a trade mark? 

“The smell of freshly-cut grass”

As an example, the United Kingdom Intellectual property office acknowledges scents when they are precisely described: “a floral fragrance/smell reminiscent of roses” for tyres[1] and a “strong scent of bitter beer” for flights for darts. Similarly, the European trade mark office (OHIM) has authorised to trade mark the smell of “freshly-cut grass” for tennis balls in 1999, and held that it was a “distinct smell which everyone immediately recognises from experience."
Nonetheless, this solution remains the object of controversy since such a trade mark could not be perceived objectively, and each individual would have different perception of it. This would not allow for a clear and precise identification of the protected object. 
Consequently, three years later, the European Court of Justice (ECJ) reconsidered the criteria and held that "the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words (“a balsamic fruity scent with a slight hint of cinnamon”), by the deposit of an odour sample or by a combination of those elements” [4].

II. …To the inception of the “feeling” brand 
 
So, what do we register now? 

After the so-called Trade Mark Reform Package, European trade mark offices have a range of possibilities - from allowing an olfactory trade mark to be registered with a sample of the scent and its graphic representability. With this deposit of a sample, we have moved on from an objective requirement – the graphic representability of the trade mark – to a more subjective requirement, a representability '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' (article 3 of the new Directive and article 4 of the new Regulation). In that sense, the change is from a “description-based system” to a “feeling-based system”. 

How will this impact on registration offices? 

Although this reform offers broad new perspectives, the Trade Mark Reform Pack may create future challenges.

1) Registering trade marks with the competent offices

 Deleting the requirement of a graphic representability may prove to be a problem for the competent offices who do not presently have the human and technical means to examine these unconventional requests. As the purpose of registering a trade mark is to make it legally binding on third parties, the latter must imperatively be able to identify the trade mark easily and precisely, and this may be a challenge after the reform. 

2) The requirement of a distinctive trade mark

One of the main difficulties we may come across upon choosing a smell as a distinctive sign is that smells are closely linked to the product itself (eg olfactory trade marks for perfumes or candles). In other words, it may prove impossible to register a trade mark as a non-distinctive sign if the value of the fragrance is deemed to stem from the smell. From that point of view, the impact of the reform may be limited for trade marks on candles, for instance. 

3) Assessing the risk of confusion between trade marks and the risks of counterfeit 

Assessing confusion and similarities in something as subjective as a smell could raise the issue of counterfeiting. Furthermore, conflicts between “traditional” and “non-traditional” trade marks would put us at risk in terms of confusion: for example how would we solve the potential conflict between the word mark “ROSE”, the olfactory mark “scent of rose” and the figurative mark representing a rose, all for the same products? Could the smell constitute a legally binding anteriority against a word mark? In our opinion, French courts may, in time, hold that position. The same question will arise in assessing and enforcing textures and tactile impressions as trade marks, which could from now on be registered.  

Conclusion

Our view is that the impact of this reform is both a significant opportunity for new registrations but will also require precise regulating to ensure the monopoly and identity of each proprietor. In the next few years, we should expect to see many trade marks combine, as a precaution, various kinds of registrations available.  

Céline Bondard is an Attorney at Law at Paris law firm Bondard.  She is admitted in Paris and New York and President of the French-American Bar Association (France).