Law & Odour? Trade Marks Registry green lights registration of first smell mark

The Trade Marks Registry has accepted India’s first olfactory trademark application, a “floral fragrance/smell reminiscent of roses as applied to tyres” filed by Sumitomo Rubber Industries..In an order dated November 21, Controller General of Patents, Designs & Trade Marks Prof Unnat P Pandit held that the mark satisfies the statutory requirements under Section 2(1)(zb) of the Trade Marks Act, 1999, particularly distinctiveness and graphical representation..The application was initially examined and objected to under Sections 9(1)(a) and 2(1)(zb) of the Act. The Registry held that the mark lacked distinctiveness and did not meet the mandatory requirement of graphical representation prescribed for all trademarks. An examination report was issued in August 2023, followed by several rounds of hearings and written submissions. Given the novelty of the issues raised, the Registry appointed senior IP practitioner Pravin Anand as amicus curiae to assist the adjudication. A detailed scientific and comparative analysis was submitted by the amicus, including a graphical model developed by researchers at the Indian Institute of Information Technology (IIIT), Allahabad..Sumitomo submitted that it has infused a rose-like floral fragrance into its tyres since 1995 as part of its product innovation strategy and that the fragrance has acquired distinctiveness internationally.It relied heavily on its UK registration for the same mark, the first smell mark recognised in that jurisdiction. According to the applicant, the scent of roses is universally recognisable, inherently distinctive and easily associated with the source when applied to an unexpected product such as tyres..The amicus emphasised that Indian law neither expressly recognises nor prohibits olfactory marks and, therefore, the inclusive definition of “mark” permits such protection if statutory requirements are met. He opined that the smell of roses is arbitrary in relation to tyres and inherently distinctive and that the objections raised in the examination report could be removed..A key hurdle was the statutory requirement that a trademark must be “capable of being represented graphically”. To satisfy this, the applicant adopted a scientific graphical representation created by three IiIT Allahabad researchers.The graphic, reproduced in Annexure A to the order, depicts the rose-like smell as a vector plotted in a seven-dimensional space comprising “fundamental smell families”—floral, fruity, woody, nutty, pungent, sweet and minty..The Registry held that although conventional graphical representations cannot capture smells in the manner they capture word or device marks, the scientific representation submitted in this case was sufficiently “clear, precise, self-contained, intelligible, objective and durable”. It found that the model accurately defined the constituent elements of the smell along with their relative strengths, enabling authorities and the public to understand the precise subject matter of protection..On distinctiveness, the Registry noted that the scent of roses has no connection with the nature or characteristics of tyres and is therefore arbitrary in relation to the goods. It further observed that the fragrance’s contrast with the typical smell of rubber would allow consumers to associate the scent directly with the applicant. This, it held, meets the statutory requirement of being “capable of distinguishing” the goods of one person from those of others..Sumitomo was represented by a team from Cyril Amarchand Mangaldas comprising Swati Sharma (Partner and Head- Intellectual Property), Revanta Mathur (Partner) and Sannat Chandna (Principal Associate- Designate)..[Read Order].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.