To scent, or not to scent, that is the question:
a comparative analysis of olfactory trademarks in the EU and US
as good brand opportunities for SMEs
by Luca Escoffier* & Arnold Jin**
1.
Introduction
In an increasingly globalized economy, trademarks are becoming more important in
distinguishing one company’s goods or services from another. While trademark law has long
protected this important source-identifying function, as technology has advanced, there has been
a recognition that other devices, such as scents, are capable of being used as mark. Accordingly,
this article explores the registration processes in both the European Union and the United States
of America to determine the registrability of olfactory scents as trademarks.
2.
How to register a trademark in the European Union
In the European Union it is possible to register a trademark either at the national level by
going to the trademark office of each country or at the Community level by opting for the
Community Trademark (“CTM”), which confers upon the applicant an intellectual property right
enforceable in all the Member States. In order to obtain a valid registered trademark, an applicant
has to register a sign that must comply with the requirements set forth in the new Community
Trademark Regulation1 (“CTMR”).
A CTM, according to Article 9(1) CTMR, shall confer upon the proprietor exclusive
rights that allow him to prevent all third parties, not having his consent, from using in the course
of trade:
*
Luca Escoffier is a Ph.D. candidate at the Queen Mary Intellectual Property Research Institute, London,
UK. He is also a TTLF Fellow of the Stanford-Vienna Transatlantic Technology Law Forum, and CEO of Usque Ad
Sidera LLC. He may be reached at ceo@usqueadsidera.com.
**
Arnold Jin received his LL.M. in Intellectual Property Law & Policy from the University of Washington
School of Law in June 2010. He is currently the Government Surveillance Fellow at the American Civil Liberties
Union of Washington. He may be reached at ajin7@uw.edu.
1
The Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark is a
codified version of the previous regulation of 1994 and all the subsequent amendments.
1
“(a) any sign which is identical with the Community trade mark in relation to
goods or services which are identical with those for which the Community trade
mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community
trade mark and the identity or similarity of the goods or services covered by the
Community trade mark and the sign, there exists a likelihood of confusion on the
part of the public; the likelihood of confusion includes the likelihood of
association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in
relation to goods or services which are not similar to those for which the
Community trade mark is registered, where the latter has a reputation in the
Community and where use of that sign without due cause takes unfair advantage
of, or is detrimental to, the distinctive character or the repute of the Community
trade mark.”2
The following is a graphic representation of the registration process before the Office for
the Harmonization in the Internal Market (“OHIM”). The refusal of an examiner may be
appealed before the Boards of Appeal of the OHIM and their decisions may be appealed before
the General Court and then, only for questions of law, before the European Court of Justice
(“ECJ”). The ECJ may also adjudicate cases referred to it through the procedure of Article 234
EC for preliminary rulings when national courts have to interpret a domestic provision, which is
the result of the implementation of a provision set forth in the trade mark Directive.3
2
See Council Directive 2008/95, 2008 O.J. (L 299) 1 (EC).
Please note that Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008
replaced the content of Council Directive 89/104/EEC of 21 December 1988 without any substantive change. At the
Community level, Regulations are directly applicable and in force in all the Member States, as the CTMR.
Directives, on the other hand, are other normative acts that provide Member States with rules that need further
implementation within the national legal systems.
3
2
Figure 1 – Graphic representation of the registration process
Section 1(2) CTMR lays down the main features of the CTM as follows:
“A Community trade mark shall have a unitary character. It shall have equal
effect throughout the Community: it shall not be registered, transferred or
surrendered or be the subject of a decision revoking the rights of the proprietor or
declaring it invalid, nor shall its use be prohibited, save in respect of the whole
Community. This principle shall apply unless otherwise provided in this
3
Regulation”.
Article 4 CTMR, then, enlists the “objects” that may be eligible for trademark protection:
A Community trade mark may consist of any signs 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.
So, to obtain trademark protection it is necessary to show that there is 1) a sign that must
be 2) capable of being graphically represented and that must be 3) capable of distinguishing the
goods or services of one undertaking from those of other undertakings.
3.
Is it possible to register a smell trademark?
In terms of olfactory trademarks, what can be questionable is if a smell can be defined a
sign, and if it can be graphically represented. As to the first requirement, the abstract
admissibility of smells as signs has never been questioned in the previous case law, on the other
hand, the graphical representation has been subject to different interpretations as it will appear
clearer later.
Apparently, the immediate answer to the question posed in the heading would be “no”. In
fact, in “The manual concerning proceedings before the Office for the Harmonization in the
Internal Market (trade marks and designs), Part B,” it is clearly suggested to the examiners that:
“For smells, there is presently no means of representing them graphically. To
cite: ECJ C- 273/00, “Sieckmann”, par. 70 - 72, OJ OHIM 2003, 728”.4
And again:
“Smell or olfactory marks are currently not capable of being represented
4
See the quoted manual at page 6, available at
http://oami.europa.eu/ows/rw/pages/CTM/legalReferences/guidelines/OHIMManual.en.do.
4
graphically. The same appears to apply to holograms.”5
So, from the very outset it seems that smell (or olfactive) trademarks lack one of the three
fundamental requirements to be eligible for trademark protection according to CTMR.
Nevertheless, it is interesting to look at the history of smell trademarks before the OHIM,
though, as the issue was not so clear from the very beginning, and maybe some room for their
registration might be envisioned in the future.
A search performed by using the OHIM search engine shows us that there are seven hits 6
when trying to retrieve the files relating to olfactory trademarks. The only trademark that has
been registered so far before the OHIM is the “Smell of fresh cut grass” for tennis balls, whose
registration has lapsed though. All the other applications has been refused or withdrawn. This
here below is the original graphical representation of the accepted application.
7
In the case of the tennis balls, the examiner first refused the registration of the trademark
for lack of graphic representation through the mere wording, but on 11 February 1999 the Board
of Appeal of the OHIM stated that:
“The smell of freshly cut grass is a distinct smell which everyone immediately
recognizes from experience. For many, the scent or fragrance of freshly cut grass
reminds them of spring, or summer, manicured lawns or playing fields, or other
such pleasant experiences.
The Board is satisfied that the description provided for the olfactory mark sought
to be registered for tennis balls is appropriate and complies with the graphical
representation requirement of Article 4 CTMR.”8
5
Id., at 9.
To see the results of the search on olfactory trademarks, go to
http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do (last visited March 31, 2010).
7
For the CTM database, see http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do (last
visited March 31, 2010).
8
For the integral text of the decision, go to
http://oami.europa.eu/search/LegalDocs/la/en_BoA_Search.cfm?applicationNo_Option=IS&applicationNo=000428
870&orderby_option=DATE_DESC (last visited March 31, 2010).
6
5
Unfortunately for the applicants, after this application and several refusals from the
OHIM, the European Court of Justice, in 2002, handed down a decision in the case C-273/00,
which was referred to the ECJ under Article 234 EC by the Bundespatentgericht (Germany) for a
preliminary ruling in proceedings brought by Mr. Sieckmann on the interpretation of Article 2 of
First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the
Member States relating to trade marks. The case concerned the questions raised during the
proceedings brought by Mr Sieckmann against the refusal of the Deutsches Patent- und
Markenamt (German Patent and Trade Mark Office) to register an olfactory mark (balsamically
fruity with a slight hint of cinnamon) in respect of various services consisting of the following
chemical formula:
C6H5-CH = CHCOOCH3 (methyl cinnamate = cinnamic acid methyl ester)
The referring German Court stayed the proceedings and asked the ECJ the following
questions:
“(1) Is Article 2 of the First Council Directive of 21 December 1988 to
approximate the laws of the Member States relating to trade marks (89/104/EEC)
to be interpreted as meaning that the expression signs capable of being
represented graphically covers only those signs which can be reproduced directly
in their visible form or is it also to be construed as meaning signs - such as
odours or sounds - which cannot be perceived visually per se but can be
reproduced indirectly
using certain aids?
(2) If the first question is answered in terms of a broad interpretation, are the
requirements of graphic representability set out in Article 2 satisfied where an
odour is reproduced:
(a) by a chemical formula;
(b) by a description (to be published);
(c) by means of a deposit; or
6
(d) by a combination of the abovementioned surrogate reproductions”?9
Even though the applicant submitted the chemical formula of the smell that sought to
register and showed his willingness to file a sample in a container too, the ECJ held, as to the
first question, that:
“the answer to the first question must be that Article 2 of the Directive must be
interpreted as meaning that a trade mark may consist of a sign which is not in
itself capable of being perceived visually, provided that it can be represented
graphically, particularly by means of images, lines or characters, and that the
representation is clear, precise, self-contained, easily accessible, intelligible,
durable and objective.”10
As to the second question referred to the ECJ, there were several arguments brought
against the graphical representability of a smell mark that led the Court to rule as follows:
“as regards a chemical formula, as the United Kingdom Government has rightly
noted, few people would recognise in such a formula the odour in question. Such
a formula is not sufficiently intelligible. In addition, as that Government and the
Commission stated, a chemical formula does not represent the odour of a
substance, but the substance as such, and nor is it sufficiently clear and precise. It
is therefore not a representation for the purposes of Article 2 of the Directive.
In respect of the description of an odour, although it is graphic, it is not
sufficiently clear, precise and objective.
As to the deposit of an odour sample, it does not constitute a graphic
representation for the purposes of Article 2 of the Directive. Moreover, an odour
sample is not sufficiently stable or durable.
If, in respect of an olfactory sign, a chemical formula, a description in words or
the deposit of an odour sample are not capable of satisfying, in themselves, the
9
See Case C-273/00, Sieckmann v. Deutches Patent-und Markenamt, 2002 E.C.R. I-11737 [hereinafter
Sieckmann].
10
See Sieckmann, supra, at ¶ 55, available at http://oami.europa.eu/EN/mark/aspects/pdf/J J000273.pdf (last
visited March 31, 2010).
7
requirements of graphic representability, nor is a combination of those elements
able to satisfy such requirements, in particular those relating to clarity and
precision.
In the light of the foregoing considerations, the answer to the second question
must be that, in respect of an olfactory sign, the requirements of graphic
representability are not satisfied by a chemical formula, by a description in
written words, by the deposit of an odour sample or by a combination of those
elements”.11
In light of the above, then, even if it is clear that the registration of smell marks is not
excluded tout court by the CTMR and the trade mark Directive because a sign that cannot be
perceived visually might still well be eligible for protection, on the other hand, the sign in
question has always to meet the requirement of graphical representation. This argument though,
at least as it has been interpreted in the quoted decision of the ECJ, does not allow the applicant
to register an olfactive mark by submitting a chemical formula, as it is not easily intelligible, by
providing a description in words, as it is not sufficiently precise and objective, and by filing an
odour sample because it is unstable and not durable. That said, at the moment, it is seems
impossible to register an olfactive trademark at the Community level, even though it is feasible
in abstract terms.
4.
Conclusions
What is interesting to note, in our view, is that the only possible way to register an
olfactive trademark in the future is related to the advancement of technology. In fact, by
reasoning a contrario from the quoted decision of the ECJ, it could be stated that as long as it
could be possible to obtain 1) a durable and stable sample that could 2) be easily and objectively
perceived by the public through the consultation of the OHIM public database, there would be no
reason to deny the registration. In this regard, it is worth noting that there are already several
patents relating to the electronic smell emission and storage of samples,12 therefore, we envision
11
Id., at ¶¶ 69 – 73.
Moreover, Ericsson, the Swedish telecommunication company, has already posted in February 2009 on
YouTube a video of the “Harmonizer”, a prototype of a device that is able to capture, store and send smells
12
8
that, as long as three conditions will be met, it is likely that the registration of olfactive trade
marks will be allowed. Notably, the three conditions or technological advancements are the
following:
1) creation and wide adoption of computers with built-in smell emitting devices;
2) adoption of an international classification (with well-defined categories) of smells
with durable and stable samples that may be accessed (and maybe purchased) on-line;
3) adoption by the OHIM of a database in which these samples may be submitted with
the application, stored, and available for future searches by the public.
The last consideration to make, though, is the following: is it realistic to think that smells
could be eligible for protection in general, or is it very likely that the OHIM and the ECJ in the
future will rule out the possibility to trademark smells by interpreting in a different way Article 4
CTMR? Realistically, this issue will probably never be dealt with by them, though, as the
European Union will always have the chance to make smells not eligible for trademark
protection from a statutory standpoint, and it that case it will be a question of more general
policy considerations rather than strict legal interpretation.13
5.
How to register a trademark in the United States
A trademark is any term, name, symbol, device, or any combination thereof used to
identify goods or services.14 In the United States, the Lanham Trademark Act of 1946, 15
U.S.C. §§ 1051-1141n (2006) (“Lanham Act”), “gives a seller or producer the exclusive right to
‘register’ a trademark, and to prevent his or her competitors from using that mark.” 15 One
principle underlying trademark law is that the mark “is used to identify and distinguish his or her
goods, including a unique product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown.”16 The U.S. Supreme Court has explained
electronically and allows the recipient to experience said smell through an electronic smell emitter, for the video
posted by Ericsson, see http://www.youtube.com/watch?v=-JBe6YUop7s (last visited March 31, 2010).
13
See e.g., Marco Marzano de Marinis, Beyond Tradition: New Ways of Making a Mark, WIPO MAGAZINE
16-19 (July-Aug. 2004).
14
See 15 U.S.C. § 1127 (2006).
15
See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 163 (1995).
16
Id. at 162 (quoting 15 U.S.C. § 1127).
9
how trademark law benefits consumers—“by preventing others from copying a sourceidentifying mark” it “reduces customer’s costs of shopping and making purchasing decisions,”
“for it quickly and easily assures a potential that this item—the item with the mark—is made by
the same producer as other similarly marked items that he or she liked (or disliked).”17 “At the
same time, the law helps assure a producer that it (and not an imitating competitor) will reap the
financial, reputation-related rewards associated with a desirable product,” in effect, encouraging
production of quality products while at the same time discouraging “those who hope to sell
inferior products by capitalizing on a consumer’s inability to quickly evaluate the quality of an
item offered for sale.”18 Thus, as a threshold inquiry, the mark must be evaluated according to
its arbitrariness and at a minimum cannot be merely descriptive. Acquired distinctiveness, or
secondary meaning, however, is what every mark owner aims for because in the consuming
public’s mind, the trademark has achieved a degree of recognition.
5.1
Federal Registration, State Protection, and Common Law Rights.
Under the U.S. Lanham Trademark Act of 1946, 15 U.S.C. §§ 1051-1141n (2006), any
owner of a trademark “used in commerce may request federal registration of its trademark on the
principal register” by paying the prescribed fee and filing in the U.S. Patent and Trademark
Office (“USPTO”).19
The “use in commerce” requiem is essential for a trademark’s
registrability because Congress’ power to legislate in this arena is derived from its Commerce
Clause powers.20 “Commerce” in the U.S. has last been interpreted by the Court as to entail
“three general categories of regulation in which Congress is authorized to engage under its
commerce power.”21
“First, Congress can regulate the channels of interstate commerce.
Second, Congress has authority to regulate and protect the instrumentalities of
interstate commerce, and persons or things in interstate commerce.
17
Id. at 163-4, quoting 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 2.01[2], p. 2-3 (3d
ed. 1994).
18
Id.
19
15 U.S.C. § 1051(a)(1) (2006).
20
When Congress first enacted trademark protection, it attempted to legislate under its powers stemming
from the Intellectual Property clause, U.S. CONST., ART. I, sec. 8, cl. 8, see In re Trade-Mark Cases, 100 U.S. 82
(1897).
21
See Gonzales v. Raich, 545 U.S. 1, 16 (2005).
10
Third, Congress has the power to regulate activities that substantially affect
interstate commerce”.22
This aspect was made abundantly clear by the Court when Congress’ first attempt to
legislate was struck down as unconstitutional:
“Congress, in order to afford an effective remedy for the evil, and extend the
same protection to French importers that France gives to our producers and
merchants in her markets, has enacted that the forger of trade-marks and the
dealer in forged trade-marks shall answer at the bar of criminal justice in the
courts of the United States.
The end is lawful, within the power of Congress; the means are appropriate.
But it is said that, in passing the statutes of Aug. 14, 1876, and July 8, 1870,
Congress has exceeded its power, because in their application they cover cases
arising wholly within the several States, and make acts committed within their
jurisdiction-acts which are not directed against the operations of the general
government-crimes against the United States; that they not only regulate foreign
and inter-state commerce, but affect the domestic concerns of the several
States”.23
Under the Lanham Act, a trademark must be registered in one of the forty-five (45)
denoted classes of goods and/or services by the USPTO.24 As provided under section 12 of the
Lanham Act:
“Upon the filing of an application for registration and payment of the prescribed
fee, the Director shall refer the application to the examiner in charge of the
registration of marks, who shall cause an examination to be made and, if on such
examination it shall appear that the applicant is entitled to registration, or would
be entitled to registration upon the acceptance of the statement of use required by
22
See Raich, 545 U.S. at 16-17, citing Perez v. United States, 402 U.S. 146, 150 (1971); NLRB v. Jones &
Laughlin Steel Corp., 301 U.S. 1, 37 (1937).
23
Id. at 89.
24
See www.uspto.gov/faq (last visited March 30, 2010).
11
section 1051(d) of this title, the Director shall cause the mark to be published in
the Official Gazette of the [USPTO]”.25
However, certain marks are precluded from registration, such as those marks which:
“Consists of or comprises immoral, deceptive, or scandalous matter; or matter
which may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt, or
disrepute; or a geograhical indication which when used on or in connection with
wines or spirits, identifies a place other than the origin of the goods and is first
used on or in connection with wines or spirits by the applicant on or after one
year after the date on which the WTO Agreement (as defined in section 3501(9) of
Title 19) enters into force with respect to the United States.”26
Perhaps the most significant language found in section 2(f) of the Lanham Act is where it
states: “nothing in this chapter shall prevent the registration of a mark used by the applicant
which has become distinctive of the applicant’s goods in commerce.”27 Thus, once the mark has
acquired secondary meaning with the consuming public—and assuming other requirements have
been fulfilled—the mark must be granted registration on the principal register. Once the mark is
registered, it is effective for ten (10) years, and it may be renewed for “periods of 10 years at the
end of each successive 10-year period.”28
If a mark is not ready for use at the time of
registration, the statute also provides for filing a bona fide intent-to-use affidavit of the
trademark up to six months before the mark is used in commerce in connection with the goods or
services.29 State registration is also available, and will oftentimes be less expensive than federal
registration, although the geographic reach of the state registration will be limited to that area. 30
However, once a party begins to “use” the mark in commerce in connection with his or her goods
and/or services, the owner acquires common law rights in the trademark.31
25
26
27
28
29
30
31
See 15 U.S.C. § 1062(a) (2006).
See 15 U.S.C. § 1052(a) (2006).
See 15 U.S.C. § 1052(f) (2006).
See 15 U.S.C. §§ 1058;1059 (2006).
See 15 U.S.C. §§ 1058(b); (d)(1) (2006).
See e.g., Wash. Rev. Code 19.77 et. seq.
See Galt House, Inc. v. Home Supply Co., 483 S.W.2d 107 (Ky. App. Ct. 1973).
12
Figure 2 – Graphic representation of the registration process
When determining whether a trademark has been infringed, the U.S. Federal Circuit
Courts use the fact-intensive likelihood of confusion test, which employs a number of factors,
none of which are dispositive, in its balancing:
1) Strength of the senior mark;
2) Similarity of the marks;
3) Relatedness of the goods or services;
4) Evidence of actual confusion;
5) Marketing channels used;
6) Likely degree of purchaser care;
7) Intent of junior user in selecting the mark; and
13
8) The likelihood of expansion of the product lines.32
In Qualitex Co. v. Jacobson Products Co., 514 U.S.159 (1995), the Supreme Court paved
the road for olfactory marks to be registrable trademark subject matter as the Court observed in
its opening paragraph:
“The question in this case is whether the Trademark Act of 1946 (Lanham Act),
15 U.S.C. §§ 1051-1127 (1988 ed. and Supp. V), permits the registration of a
trademark that consists, purely and simply, of a color.
We conclude that,
sometimes, a color will meet ordinary legal trademark requirements. And when it
does so, no special legal rule prevents color alone from serving as a
trademark”.33
More importantly, after its review of the Trademark Act of 1946, the Trademark Review
Commission of the United States Trademark Association “determined that the terms ‘symbol, or
device’ should not be deleted or narrowed to preclude registration of such things as a color,
shape, smell, sound, or configuration which functions as a mark.”34
6.
Is it possible to register a smell as a trademark?
The first case in the U.S. to specifically address an olfactory mark was In re Clarke, 17
U.S.P.Q.2d 1238 (T.T.A.B. 1990).35 The USPTO Trademark Trial and Appeal Board (“TTAB”)
reversed the examiner’s decision that the applicant’s “Plumeria blossom” scented “sewing thread
and embroidery yarn” mark was unregistrable on the principal register. 36
In Clarke, the
examiner argued that the applicant failed to explain how the Plumeria scent acted as a source
indicator to consumers, and that it was “de jure functional, assertedly because of the competitive
need for free access to pleasant scents or fragrances.”37 In its reversal, the TTAB reasoned:
32
There are eleven circuits in the U.S. Federal Court system, and each uses a variation of the likelihood of
confusion test, see e.g., Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961); AMF Inc. v.
Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979); Tally-Ho, Inc. v. Coast Community College District, 889 F.2d 1018
(11th Cir. 1989); AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 792-3 (6th Cir. 2004).
33
See Qualitex, 514 U.S. at 161.
34
See The United States Trademark Association Trademark Review Commission Report and
Recommendations to USTA President and Board of Directors, 77 T.M.R 375, 421 (Sept.-Oct. 1987).
35
See id.
36
See In re Clarke, 17 U.S.P.Q.2d 1238 (1990) [hereinafter Clarke].
37
See Clarke, supra, at 1239.
14
“That is to say, fragrance is not an inherent attribute or natural characteristic of
applicant’s goods but is rather a feature supplied by applicant.
Moreover,
applicant has emphasized this characteristic of her goods in advertising,
promoting the scented feature of her goods. Applicant has demonstrated that
customers, dealers, and distributors of her scented yarns and threads have come
to recognize applicant as the source of these goods. In view of the unique nature
applicant’s product, we do not believe that the failure of applicant to indicate in
her promotional materials the specific scent or fragrance of her yarn (admittedly
difficult to describe except in the manner that applicant has done so) is
significant. In her advertisements and at craft fairs, applicant has promoted her
products as having a scented nature. We believe that applicant has presented a
prima facie case of distinctiveness of her fragrance mark”.38
What is interesting about the TTAB’s decision in Clarke, is that in a footnote, the court
narrowed the holding of the case, asserting: “we are not here talking about the registrability of
scents or fragrances of products which are noted for those features such as perfumes, colognes or
scented household products.”39
“Nor is this a case,” the TTAB explained, “involving the
question of descriptivenes of a term which identifies a particular fragrance of a product….in such
cases it has been held that a term is unregistrable under Section 2(e)(1) of the Act if it merely
describes an odor or other significant feature of the product.”40 Thus, both through the case law
and the language of the statute, it is well-accepted that an olfactory mark which has acquired
secondary meaning—without being utilitarian—is registrable under the Lanham Act.41 And the
most updated edition of the Trademark Manual of Examining Procedure, confirms this principle:
“The scent of a product may be registrable if it is used in a nonfunctional manner.”42
7.
Conclusions
Surprisingly, since Clarke, there has not been another olfactory mark that has registered
in the U.S., perhaps due to the narrowly crafted footnote disclaiming the registrability of
38
See Clarke, supra, at 1239-40.
See Clarke, supra, at n. 4.
40
Id.
41
“The scent of a product may be registrable if it is used in a nonfunctional manner.” See Trademark Manual
of Examining Procedure, Chapter 1200, § 1202.13 Scent, Fragrance, or Flavor (6 th ed. 2009).
42
See Trademark Manual of Examing Procedure, 6 T.M.E.P. § 1202.13 (2009).
39
15
perfumes and scented household products—which would seem the most obvious applicants for
such marks.
Moreover, the Clarke court also pointed out with respect to the registration
certificate that “[as of 1990] [a]lthough advances are continually being made in Office operations
and practices, the era of ‘scratch and sniff’ registrations is not yet upon us.”43
Applying the principles described above to the cases brought before the ECJ, it seems to
follow that those marks would be registrable under the Lanham Act. Since the refusal to grant
Mr. Sieckmann’s registration was due to his inability to graphically represent the scent, and the
mark’s acquired distinctiveness was not contested, there does not appear to be any basis in the
U.S. to refuse registration—assuming the “use in commerce” requiem is satisfied as well.
8.
Overall Conclusions
The discrepancy between the U.S. and the European systems is clear in the field of
olfactive trademarks. The U.S. allows applicants to potentially register a scent as opposed to the
OHIM. What is really interesting though, as briefly mentioned above, is that in the U.S. none –
after the Clarke case - has used this vehicle to create a monopoly on other products, and this is
probably more related to elaborate corporate decisions rather than legal technicalities. In fact,
what would be the real value of a registered scent? It is definitely an enormous incentive if the
scent identifies the product itself or one of its major features, but what if this is not the case?
Frankly, we do not see any product that could actually have a competitive advantage because of
its unique scent if the scent itself is not “the” or one of its major characteristics. In fact, things
that are not known or unique for their scent, do they really need to have one to be more
marketable? We think that the answer is probably “no” and this is probably proven by the
scarcity of applications in the U.S. even though the registrability of a scent is theoretically
possible.
43
See Clarke, supra, at n.6.
16