Adding to the discussion on India’s first smell mark registration, Shama Mahajan explains how the reliance placed by the Indian Trademark Registry on foreign precedents, especially the United States, is misconstrued. Shama is an LL.M Candidate at the National University of Singapore, pursuing her masters in Intellectual Property and Technology Law.
Don’t Look to the United States: They See ‘Smell’ Differently!
By Shama Mahajan
Indian Trade Mark Registry has granted its first smell mark, for advertisement — “Floral Fragrance/Smell Reminiscent of Roses as Applied to Tyres”, filed by Sumitomo Rubber Industries. While a segment of the population is hailing it as path-breaking, there have been certain criticisms and rightly so which focus beyond the glorification of ‘non-conventional’ marks. In this post, I analyse the possibility of ‘smell’ as a trademark and further argue that the reliance placed by the Indian Trademark Registry on foreign precedents especially the United States is misconstrued.
The Olfactory Effect: Same but Different
Smell is indeed a powerful tool and plays a crucial role in various marketing campaigns. From ‘aroma therapy’ for calmness to brands investing in ‘scent marketing’. Studies also show that, recall of a scent can be stronger than that of any visual. We all know how a ‘Starbucks’ shop smells and that eraser we used as child!
What is interesting though, is that humans do not experience the same smell in the same way. Research in the domain of olfactory sense of humans is an ongoing discourse where even scientists fail to conclusively determine how exactly these receptors work when we ‘smell something’. Studies indicate that, small differences in olfactory receptor genes, which are extremely common in humans, can affect the way each receptor functions thus impacting how one experiences a particular smell. It is also seen that scents are perceived differently based on environmental conditions and characteristics of the individual like age.
Smell-marks: When the label of non-conventional takes over ‘trade marks’!
A trade mark is supposed to function as a source identifier, for a consumer to distinguish the particular product from the rest, to make their purchasing decision. Conventional marks are those trade mrks which mostly includelogos, names, devices of some sort or a combination of all of them.
With technological advancements business’s adopted various ways of developing associations with their customers creating a ‘brand’. The indicia of identification of the brand also started to expand from logos to the so-called ‘non-conventional’ marks like single colour, sound marks and even tastes etc. ‘Smell’ also started becoming popular as source-identifier with countries like USA and UK granting them trade mark registrations. However, this recognition in the US is different from the one proposed by the Indian Trade Mark Registry.
For a mark to be considered as a Trade Mark it must satisfy the limb of ‘distinctiveness’ by either being inherently distinctive or having acquired the distinctiveness/secondary meaning. In the US, ‘non-conventional’ trade marks, are not considered inherently distinctive and hence, must meet the ‘acquired secondary meaning’ threshold for successful registration. For example, single colour marks are generally granted registration in US only when they have acquired distinctiveness/secondary meaning (and that they are not barred by functionality limitation) which requires establishing proof of the capacity of that single colour to invoke associations of origin and as source-indicator. This also means that the mark must have been used for a long period building that association. Thus, the mere non-conventionality is not sufficient to acquire registration in the US.
India’s Decision not Supported by US Precedents
Before the Indian Trade Mark registry submissions were made, highlighting the grant of smell marks in the US. However, the discussion centered around functionality of the smell as a mark and the requirements imposed in this regard in the U.S. Trademark Examination Manual and ultimately holding that registration of smell mark is possible. This invocation of US in examining smell marks was only partial. India’s reliance on US decisions for ‘smell’ marks is misconstrued simply because India by way of its grant has recognised inherent distinctiveness of a smell mark basis its graphical representation and its ability to operate as source identifier. Basically, by assuming that smell can operate as distinguishing factor instead of requiring the applicant to discharge the burden of proof of establishing that it actually can in practice. A position that US outrightly rejects as far as non-conventional marks like single colour and smell marks are concerned. By adopting a ‘acquired secondary meaning’ approach towards non-conventional marks, there is a balance that is maintained between the brand’s investment and the law’s requirement.
In the US, if a mark fails to prove acquired distinctiveness, it does not get registered on the Principal Register. The threshold of proving acquired distinctiveness is very high as it’s requires showing of continuous use, annual sales, advertising which must ultimately prove that consumer associates the scent with your product. Verizon store that sold mobile phones, tried registering its ‘flowery musk scent’ (U.S. Reg. No. 4,618,936) used in their stores as a scent mark but was rejected registration on Principal Register on the ground that, ‘[p]rospective consumers are unlikely to perceive a scent as a service mark for ‘retail store services featuring communication products and services, consumer electronics, and demonstration of products’ because . . . stores commonly use scents to create ambiance in stores.’ In other words, ambience does not function as source indicator but forms a part of creating a certain customer experience. The mark as on date stands cancelled for non-filing of relevant deceleration. The marks that do not get registered on the Principal Register remain on the Supplemental Register which means that they do not enjoy presumption of any valid and enforceable ownership.
In the words of Prof. David Vaver, re-forming the law is not the same as reforming the law. Thus, it would be wrong to rely on US smell mark grant decisions to support the Indian outcome for, even though graphical representation is not mandated in the US, the mandatory threshold of acquired distinctiveness ensures that, non-conventional marks are not registered merely for being ‘non-conventional’. The number of smell marks successfully registered till now in the US being the res ipsa loquitor (Latin maxim which translates to “res ipsa loquitor”) here!
The problem that India’s recognition of smell mark as inherently distinctive creates is that, it opens the possibility for other non-conventional marks like ‘taste marks’ to be registered by representing them graphically as in this case. The question then is, can a customer who cannot taste the product until they buy it, use taste as a source identifier? Trade Mark Registry’s precedence, does not require the applicant to answer this question per se.
Can Smell Operate as Inherently Distinctive?
The notion of conventional marks like logos and names does not account for individuals who may not interact with a mark visually. For such individuals’ non-conventional marks like taste or smell are not really ‘non-conventional’ but their primary source of sensory interaction. The statutory requirement of distinctiveness across most jurisdictions is governed by sight. Thus, ‘non-conventional marks’ like taste, olfactory and tactile marks shift trade marks them into a non-visual sphere. As argued by many, this approach will make the law more attuned to the needs of visually impaired individuals. The need for intellectual property laws to become more attuned to the needs of persons with disabilities is indeed a matter for policy development like the possibility of trade marks being represented in braille as granted in Germany.
However, the question in this case, in my opinion is not that such marks can’t be considered as trade marks per se but rather when should they be considered as trade marks. The question of ‘when’ exists as a trite balance between proprietary interest of one individual vis-à-vis the general public which lies at the core of any intellectual property right. This approach was also adopted with single colour marks by the US which are not granted registration unless acquired distinctiveness is proven. Thus, it can be said that the threshold of registrability is linked to the nature of the mark and the market impact it would have if exclusive rights are granted to one individual in that mark for perpetuity.
The available spectrum of smells that humans can recognise is not small (One Trillion is surely a lot!) but the extent that one can describe them using known vocabulary possibly is, though research in this field also shows different cultures have different vocabulary for smell. The challenge for trade marks in this olfactory domain stems from the enforcement perspective. Registration as trade mark not only grants rights against infringement but also dilution which is a broader right given, it does not demand consumer confusion but merely some sort of likelihood of harm to the mark owner. Thus, certainty of the mark is crucial to dispel consumer confusion as well as for other market players to avoid infringement and dilution claims. When a scent’s ability to actually function as ‘distinctive’ itself cannot be legally guaranteed given the scientific genesis of the same, the best possible alternative then is to rely on ‘acquired distinctiveness’ which balances the concerns (subject to the functionality and graphical representation requirement in India).
Thus, what lies at the crux of this issue is whether non-conventional marks can be considered ‘inherently distinctive’ or they must instead be asked to satisfy ‘acquired distinctiveness’. This is merely because the mark is supposed to be governing the purchasing decision which means that it needs to interact with the prospective consumer prior to the product/service’s actual consumption which assists their decision by identification.
Do and are consumers likely to rely on their sense of smell alone and predominantly to identify a product/service or is the smell just an emotional connect subsequent to identification of the brand or could assist with other factors in identification? In other words, it’s when I enter ‘Starbucks’ shop that I experience or expect to experience a certain aroma or do I identify where ‘Starbucks’ is located based on the aroma? If it’s the latter, does it develop over time upon building consistency or is it by its very nature capable of doing so? The questions that Indian Trade Mark Registry did not indulge in.
To Conclude…
The appreciation pouring in for the Indian Trade Mark Registry’s decision only seems to focus on how new doors have been opened for businesses investing in scents to build their brand. One can call something revolutionary because its ‘non-conventional’ but should that be the end of a discussion or a segway into further deliberations? For now, the scent seems to have overpowered the legal principles!!