[SpicyIP] The Scent of the Sumitomo Trademark: What is the Celebration About?
Tanishka Goswami
What has been held in the Sumitomo Application
The Registry, bearing in mind the assistance provided by amicus curiae Mr. Pravin Anand, noted the following: firstly, that the definition of “marks” under Section 2(1)(m) of the Act is inclusive in nature, enabling the recognition of more categories of marks, including smell marks. Readers may note that a “mark” under Section 2(1)(m) includes a “device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” In fact, the Draft Manual for Trade Mark Practice explicitly acknowledges that smell marks do not meet the statutory requirement under Section 2(zb).
Secondly, as an “enabler of trade”, trademark law may cater to the interests of diverse businesses and their customers in distinct ways. Hence, the Registry reasoned that while graphical representations akin to word marks or device marks cannot be filed in the case of scent marks, this cannot be reason enough to “deprive an entire sector of industry working in the field of smells and aromas from the benefits of the Act”. Thirdly, the Registry stated that the graphical 7-dimensional representation of the rose-like smell in the instant case, wherein seven constituent smells are represented in the order of their strength, is clear and distinct. Additionally, they said that customers perceiving the scent of roses as a vehicle fitted with the concerned tyres passes by, will instantly form an association between the goods and their source.
To begin, the grahical representation is certainly a very creative approach — no doubts.
Nonetheless, the challenges with such an approach are plenty. One, the grant flies in the face of trademark law’s objective to protect a brand’s distinct source identifiers in a manner that does not impede fair competition; two, while a creative attempt at graphically and objectively representing smell, the 7D model is neither immediately intelligible nor accessible for all stakeholders; and three, the Registry’s order is both overbroad and non-cognizant of such endeavour forming a part of policy-making rather than legal adjudication. I discuss these concerns below.
In Smelling Roses, the Registry Overlooked Some Stinking Realities
Firstly, the purpose of trademark law is not to enable legal or proprietary monopolies over commonplace resources that are freely available; rather, to prevent consumer confusion by ensuring clear identification of the goods and services of one enterprise over those of the other. In this light, is it desirable to have trademark protection for “floral fragrance” or “smell reminiscent of roses”? If a similar odour is infused in fountain pen inks, envelopes, textiles, furniture items or cloth bags, the same would be eligible for trademark protection per the Registry’s reasoning. Essentially, the same graphical representation for a universally accessible scent can be utilized to obtain trademark registration for diverse classes of goods. Is this not stretching the purpose of trademark law beyond recognition?
Secondly, in attempting to introduce objectivity and preciseness in the representation of a “rose-like smell”, the Registry fails to appreciate that the 7D model relies on a heavily subjective/consumer-centric experience. In Ralf Sieckmann v. Deutsches Patent und Markenamt, while rejecting a smell mark for methyl cinnamate, the ECJ noted that the description “balsamically fruity with a slight hint of cinnamon” was imprecise. Not only did the ECJ emphasize on the need for clarity, preciseness and objectivity, it also emphasised that the description must not be unintelligible for laypersons. Would a presentation of the same in the instant 7D model then satisfy the objectivity criterion that renders graphical representation a mandatory requirement? Words are most certainly an imprecise technique to elaborate on smell – verbal descriptions cannot convey a fixed, single olfactory sign to the public. Surprisingly, apart from a mere textual description of the 7D model (“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”), the current Order does not delve into the rationale behind how such a model was developed. Given that the grant of an olfactory mark is a first for India, such discussion was imperative and is a glaring omission. In effect, the order is non-speaking on the underlying reasoning.
In fact, in the context of graphical representation for non-musical sounds, Dr. Dev Gangjee has noted that experimentation with complex graphical sonograms by the EU Office of Harmonization for the Internal Market quickly meant that the “gains in precision and objectivity were offset by losses in intelligibility”. In a similar vein, easy and wide access to trademark information is hampered by the current decision. In the absence of adequate policy deliberation and empirical evidence to determine distinctiveness under Section 9(1)(a), would it be wise to rely on graphical representations furthered by different scientists/researchers to sanction smell marks? In fact, there is no consensus amongst scientists on the number of basic/fundamental smells themselves. Thus, the Registry’s approach would not only compromise intelligibility (Shield Mark BV v. Joost Kist), uniformity and transparency of trademark information, but also further consumer confusion. Thirdly, building on what has been argued by Dr. Arul Scaria and Anupriya Dhonchak, it is imperative to refer to the functionality doctrine here. A feature that is essential to the purpose of a product or offers it a competitive advantage is prohibited under trademark law [Section 9(1)(b)]. When a desirable sensory attribute, such as the scent of roses, is allowed to be monopolised by the Registry, especially in the context of unpleasant-smelling rubber tyres, the same might fall foul of the functionality doctrine. In rejecting the application for registration of a mark of “peppermint scent” in the applicant’s nitroglycerine sprays, the US Trademark Trial and Appeal Board in In re Pohl-Boskamp Gmbh & Co. noted such scent as possessing a functional aspect that contributed to consumer acceptance of the product. Additional angles of analysis such as increase in transaction costs, barriers to fair competition, and larger public interest have been considered by Courts in jurisdictions such as the US and EU in the context of non-conventional trademarks in the pharmaceutical industry. I believe that a similar analysis was necessitated for the Sumitomo application as well.
Concluding Remarks: Smell Marks as Non-Conventional Marks
To conclude, a novel step needn’t always be the right one. Anti-competitive concerns striking at the root of trademark law need to be addressed through a deliberate, evidence-based policy exercise. The Indian Trade Marks Registry has previously granted registration to non-conventional trademarks such as the shape of the Zippo lighter, the Yahoo yodel, and the ICICI “Dhin Chik Dhin Chik” corporate jingle. However, unlike these illustrations, scent marks have struggled with satisfying the requirement of “graphical representation” across jurisdictions owing to our obvious inability to give words to the way something smells.
This is also pertinent in light of Article 15 of the TRIPS Agreement, which emphasises on ‘signs’ being eligible for registration if they are capable of distinguishing goods/services, as expressed in particular words, as well as “letters, numerals, figurative elements and combinations of colours as well as any combination of such signs”. The Sumitomo decision demonstrates the repercussions of moving too quickly and expansively in a bid to catch up with modern-day marketing. How the law responds to such challenges remains to be seen.
The author is indebted to Swaraj for his encouragement, helpful inputs and support in putting this article together. A big thanks to Shikhar & Utkarsh too!
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