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CAN YOU TRADEMARK A SMELL OR A SOUND?



Well, ground zero, IP consists of Trademark, Patent, Copyrights, Geographical Indication, Designs, etc. The Indian Trade Marks Act defines ‘mark’ as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof. But the arena of the marks which could be trademarked is widening both vertically and horizontally giving rise to various sub-class with advent of any new technology. More the inventors and title owners of the IP are understanding the valuation and protection necessary, the more classes, sub-classes, and divisions they wish to have their IP rightly protected. But can I secure a trademark of how something smells? A sound still has a possibility to be trademarked based on the sound wave if produced aptly and represented appropriately but a curious question would force us to think and reason as to how is it even remotely possible to trademark a smell, especially in India where even IP literacy is so naive and nascent so as the law.


Smell is a subject under non-conventional trademarks recognized as ‘scent marks’ world-wide and has come to use, but seldom feat traction. While sound marks such as the Nokia Jingle is demotic, smell marks are infrequent, scare and raw. It is surely extraordinary to find one.


The global disposition has been very riveting, but dwindle due to two stellar difficulties and these are;

  1. Will the scent mark possibly fulfill the visual requirement viz. requisite graphical representation in the case of sound mark,

  2. The scent mark necessarily must be able to distinguish itself from other marks.

This is where perplexity lies because both the graphical representation and fundamental distinguishment is barely impossible at the existing happening.This rarifies the process of registration and certification as bare description of the chemical composition and further its constitution, the ‘smell’ cannot be well-qualified as an adequate and decent visual communication or graphical representation. Such description is an abstraction and attribute of the substance itself, and not of the scent. For the needful reservation as a trademark, the smell should forthwith be attributed to the concerned trade good, and furnish it a sense of particularity, specialness and distinctiveness. The ‘smell’ per se cannot measure up to be trademarked, without the needed union with a commodity. Furthermore, the smell cannot be an effect resultant of the properties of the trade good, giving forth naturally from the outcome, although unenforceable as an authority of law and IP jurisprudence.


Over and above, the functionality doctrine positions a pedestal incongruous with such registrations. The features of a trade good that entail the nature and affiliated macrocosm of being a function of it, are not desirable, suitable, eligible, and entitled of being protected under the trademark law. Any valid, lawfully-begotten, and legit registration for trademark, in case of scent marks, ensures the exclusivity of its usage for an indefinite, undefined and obscure period, susceptible to the precondition that the utilization is solicitous with mercantile and commercial sphere. The kernel of the functionality doctrine lies in preclude monopoly, dominance and ascendance of an entity all over a indispensable attribute of the trade good, that can play a pivotal function in the commodity lines of a competitor structures. Intuitively, this philosophical system can be explicated as a instrument for encourage thriving and ethical competition. Notwithstanding, the application of this doctrine turns out to be chancy when applied in regards to scent marks. It pretenses concerns on the essence of the school of thought, and mount journey for development.


The notable proceedings of Ralf Sieckmann v. Deutsches Patent und MarkenamtC-273/00 was one of the sorts with regard to the “scent marks”.In this lawsuit, a registration for trademark was subject matter for the smell of ‘methyl cinnamate’, but was denied for the reason of the failing to comply with the touchstone necessitating graphical representation. Most of the transnational jurisdictions have not explicitly excluded the possibility of the scent-mark as the trademark law is not thoroughgoing of all the conception and construction. In point of fact, smell mark was registered, qualified and documented in the UK by Sumitomo Rubber for a floral fragrance. This was followed past first US smell trademark registered in 1990 by USPTO. A regulation of the European Parliament on October 2017 came into effect dealing with EU trademarks and amended the requirement of graphic representation to encourage and promote flexibility in the registration of trademarks. This has opened the doors for more accomplishable practical application. Similarly placed is the case of Singapore as a nation which has made various amendments to make suitable laws with regard to IP. One prominent example is the Trade Marks (Amended) Act 2004 which merged objectives and principles laid under the United States-Singapore Fee Trade Agreement. It amended the most conspicuous hitch in registering smell marks and deleted the phrase “visually perceptible” from the definition of the trademark in the Act.


In case of India the Section 2(1)(zb) of the Trademarks Act, 1999 points for the precondition of ‘graphical representation’ for any product, commodity or trade good to be trademarked. Besides, Trademark Rules, 2017 further provided for the graphical representation to be in physical/paper form, the best being a digitized form but stringently sticks upright to the mandatory requirement which at present makes it barely infeasible to have a Scent Mark in India while not straight-out denying the possibility of same. To boot, India needs to rise over and above the traditional and conventional IP protection.

 

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