Scents and trade marks - The EU reform of olfactory marks and advances in odour recognition techniques

Millie and "the smell of fresh cut grass"

Less conventional trade marks: are things likely to be easier now that the EU trade mark system has been reformed?

Katfriend Guido Noto La Diega (Northumbria University) looks into issues of registration for olfactory marks at the EU and UK levels.

Here’s what Guido writes:

“In the UK, whereas in theory olfactory trade marks can be registered, there have not been successful applications since the decision of the Court of Justice of the European Union (CJEU) in Ralf Sieckmann v Deutsches Patent- und Markenamt. This contribution suggests that scents may be more easily registered in the near future as a consequence of the EU reform of trade marks and of some technological innovations.

Scents are signs because they can convey information (Phillips Electronics NV v Remington Consumer Products Ltd (No. 1) [1998] RPC 283, 298). After all, Shakespeare taught us that names and words are main carriers of meaning, since ‘(a) rose by any other name would smell as sweet.’ (Romeo and Juliet, II, II) If a scent is not an intrinsic characteristic of the product and is not commonly used (e.g. floral fragrances in fabric softeners), it can be distinctive, since smell ‘is probably the most reliable memory that humans possess’ (Eden SARL v OHIM [2005] ECR II-4705 [25]). Overall, the main hurdle is how to represent them graphically. In order for the representation to be adequate, Sieckmann dictated seven criteria, i.e. clear, precise, self-contained, easily accessible, intelligible, durable and objective. However, the Court did not specify how to meet these criteria. In Sieckmann, it was held that the chemical formula, the description, and a sample, or their combination, did not provide an adequate representation.

Sieckmann was followed by Eden SARL, which again clarified what does not meet the requirements for registration of a scent (the image of a strawberry described as ‘smell of ripe strawberries’), without providing any guidance as to how companies may be able to register scents as trade marks.

After this, it was commented that ‘the EU system's graphic-representation requirement makes it virtually impossible in practice, albeit not in theory, to gain registration of a scent mark.’ (Bartkowski 2006). The very narrow interpretation of ‘graphic representation’ provided by the CJEU was not the only choice available. For instance, in Australia even though there is a graphic representation requirement (Trade Marks Act 1995, s 40), olfactory marks have been successfully registered (IP Australia trade mark No 1241420 represented as the Eucalyptus Radiata scent for golf tees). Another example is provided by the  (then) Office for Harmonisation in the Internal Market (OHIM)’s case law ante Sieckmann, that recognised that a description of the scent could meet the graphic representation requirement if it provided ‘clear enough information to those reading (it) to walk away with an immediate and unambiguous idea of what the mark is when used in connection with (the relevant good or service)’ (Vennootschap onder Firma Senta Aromatic Marketing’s Application [1999] ETMR 429 [13]).  

Now, UKIPO’s Trade Marks Manual does not rule out the registrability of olfactory marks. Indeed, it refers to Sieckmann to explain how not to represent olfactory marks graphically, but it seems to imply that they can still be registered, since it goes on to explain how to meet the third requirement for registration, i.e. distinctiveness. In particular, a scent ‘may be distinctive as a trade mark if it is not an inherent or natural characteristic of the goods/services but is added by the applicant to identify their goods and is recognised by the public as indicating trade origin.’ Therefore, whilst a floral fragrance is unlikely to be registrable for fabric softeners and the smell of coffee for a type of coffee, one may argue that the distinctiveness requirement may be met in the event of a scent of a particular type of coffee used consistently applied to all fabric softeners of a single undertaking and accompanied by an advertising campaign clearly referring to this unusual smell. Such a registration would be more likely to be successful in the event of acquired distinctiveness through use (which is what Hasbro is counting on in its Play-Doh application; Galbo 2017).

New possibilities for olfactory branding may be opened by legal and technical innovations. The first one is the EU reform of trade marks. Indeed, the yet-to-be-transposed Trade Marks Directive introduces a new definition of trade marks where the graphic representation of the mark is no longer required. Under the new regime, those who want to register a smell will only need to represent it ‘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’ (art 3(b)). Some difficulties may remain because the Trade Marks Directive incorporated the so-called Sieckmann criteria, that the (then graphical) representation must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’ (recital 13). However, even not going as far as arguing that ‘the amendments will abolish the Sieckmann judgement’ (Sahin 2016, 513), it is not excluded that the seven criteria may be interpreted differently in the future, for example as meaning that a combination of description, chemical formula and sample may meet the new requirements for registration. Indeed, with the new definition of trade marks there is a shift from the ‘how’ to the ‘who’. It is immaterial how the trade mark is represented (whether graphically or otherwise), as long as the competent authorities and the public can determine the subject matter of the protection. Arguably, the said combination of description, chemical formula, and sample may suffice from the authorities’ perspective. When it comes to the public, it is likely that this requirement will be absorbed by the distinctiveness. An unusual scent used consistently on a range of products or services of a single undertaking and accompanied by heavy advertising would easily put the public in the position to determine the subject matter of the protection, especially if distinctiveness is acquired through use; thus, the requirement could be easily made out. One could foresee a return to the case law ante Sieckmann that valued the customers’ viewpoint and stated, for instance, that an olfactory mark described as freshly cut grass will be recognised immediately by anyone, reminding ‘of spring, or summer, manicured lawns or playing fields, or other such pleasant experiences’ (Senta Aromatic [14]). The customers’ scent-related power of imagination cannot be underestimated. A number of scents can evoke clear memories and feelings.

Kat-nose

Another hurdle may be the extension of some absolute grounds for exclusion from registration that used to refer only to shapes and now include any ‘other characteristic’ (Trade Marks Directive, art 4(1)(e). However, the extension should not have a substantial impact on olfactory marks. The scents depending on the nature of the good were already non-registrable in the UKIPO’s practice (UKIPO 2016, para 3.2). For those adding substantial value to the good, it is likely that companies will keep preferring the route of trade secrets (Hammersley 1998) and patents (e.g. USPTO patent No 9006168). Lastly, it is hard to imagine many scenarios where scents could be necessary to achieve a technical result.

Therefore, it would seem that the EU trade marks reform may leave some scope for scents and other non-conventional marks. The same considerations apply to the European Union Trade Mark (EUTM), given that EUTM Regulation provides the same definition and criteria for representation (art 4 and recital 10; see also the EUTM Implementing Regulation, art 3), as well as grounds for exclusion from registration (EUTM Regulation, art 7(1)(e)(iii)) as the Trade Marks Directive. The EUTM Regulation is relevant for all UK businesses wanting to apply for a EUTM, provided that they have a place of business, a real and effective establishment, or a domicile in the EU, or they have appointed a representative for all proceedings before the EU Intellectual Property Office (EUIPO).

The EUTM Implementing Regulation lists a number of marks and ways to represent them, including non-conventional marks such as holograms and sounds (art 3(3)(a)-(j)). The representation of scents and other marks not comprised in the list, ‘shall comply with the standards set out in paragraph 1 and may be accompanied by a description’ (art 3(4)). Therefore, what matters is that the competent authorities and the public can determine the subject matter of the protection. An obstacle to the registration of scents as EUTMs, however, could follow from the precision that the ‘filing of a sample or a specimen shall not constitute a proper representation of a trade mark’ (art 3(9)).

Alongside the said legal innovations, technological progress could make the registration of scents easier. Two methods that could be used are gas chromatography and smelling screens (Hernandez-Marti Perez 2014).

A scent may well be graphically represented through gas chromatography, the ‘premier technique for separation and analysis of volatile compounds’ (McNair and Miller 2011). However, the WIPO takes the view that this technique be inexact and uncertain, hence, it would ‘not fulfil the demand for unambiguous graphic representation.’ (n.d., 9). However, it would seem that analytical chemistry research is advancing significantly and that, also thanks to artificial intelligence (particularly neural networks), scents can be identified with a high accuracy ‘close to 100%, without any false positives or false negatives.’ (Ugena et al. 2016, 7). Therefore, gas chromatography may be now successfully used to represent olfactory marks.

Scent recognition research has followed many paths. One of them is the smelling screen. This is a ‘new olfactory display system that can generate an odor distribution on a two-dimensional display screen.’ (Matsukura 2013, 606). Smelling screens may enable olfactory marks to be sampled and, as each individual will be able to repeat this process, the ‘principle of easy accessibility will be accomplished.’ (Hernandez-Marti Perez 2014, 668). Such a solution may provide certainty as to the registration of scents and other non-conventional marks, even though much depends on the developments and commercialisation of the relevant technology.

Given the said shift from the ‘how’ to the ‘who’ in assessing the requirement of representation, the commercial success of the smelling screen and of gas chromatography shall be one of the factors to take into account while assessing if the public can determine the clear and precise subject matter of the protection. The importance of this factor is confirmed by the EUTM Implementing Regulation, which provides that the ‘trade mark shall be represented in any appropriate form using generally available technology’ (art 3(1)). This leads us to the Internet of Things (IoT), which has become a key commercial reality, with over 20 billion smart devices in 2017, set to become nearly 80 billion by 2025 (Statista 2017). With the uptake of the IoT, one can foresee that odour recognition techniques will improve visibly. Indeed, the IoT is about devices equipped with connectivity and sensing and actuating capabilities (Noto La Diega and Walden 2016). Hence, it is likely that consumers will expect increasingly accurate and reliable sensors, including odour recognition ones. The ubiquitous availability of accurate electronic noses will make the (formerly) Sieckmann criteria more likely to be made out. When every object in everyone’s home can clearly and accurately tell its users what a product smells like, arguably the public will be able to ‘determine the clear and precise subject matter of the protection afforded to its proprietor’ (Trade Marks Directive, art 3(b)).’

Overall, legal and technical innovations promise a new age for olfactory marks and other non-conventional marks. Regardless of Brexit, there are good reasons for the UK to implement the Trade Marks Directive. Not only to prevent a state liability claim, but because a divergence could constitute a barrier for UK businesses to market their products and services in EU. At the same time, EU businesses’ interest in targeting the UK as a market could decrease if they had to develop ad-hoc compliance practices. Once the Member States remove the requirement of the graphic representation, much will depend on how accurate and widespread the odour recognition technologies will be. It would seem that, thanks to artificial intelligence and the Internet of Things, highly reliable solutions will soon be commonly available. The removal of the graphic representation, with its shift from the ‘how’ of the representation to the ‘who’, puts the public back at the centre of the system. The case law underlining the evocative force of scents and the importance of the customers’ imagination may play an increasingly significant role (Senta Aromatic; Sony Ericsson Mobile Communications AB).

The envisaged increased ease in the registration of scents and other non-conventional marks is likely to produce mixed reactions. On the one hand, this will be welcomed positively by businesses willing to innovate their branding strategies. On the other hand, those who fear the monopolisation of ideas underlying the commodification of scents could legitimately be worried.”