What’s in a smell?
Will the aroma of fresh citrus or floral lavender in a particular tea or lotion be more enticing and inviting to you because of the hint of fragrance that you can smell while sipping on it or applying it? The smell is one of the most important of the five senses and can often lean us towards purchasing products even more. These are strategic market planning tactics where manufacturers try to gain our attention towards their products because who doesn’t like a soothing scent after all? However, this also poses a question to understand the extent to which protection can be accorded to such scents and fragrances via trademark. On the other hand, can motions be trademarked?
Scent marks are relatively more challenging to get trademark registration as opposed to Visual trademarks. When services and products go a step ahead to create a larger product base, strength quality, and loyalty, industries try engaging customers and attract them by capturing their sense of smell in the form of attractive fragrances. Considering how smell captures human attention and stays in our memory for a greater period of time makes it a sound marketing strategy. However, this also makes it challenging for it to be represented graphically before the Registrar. Moreover, generic fragrances are not capable of being registered. For example, we commonly associate dishwashing and other cleaning liquids with the lemon scent because of the anti-bacterial properties. Since this is a generic smell, it cannot be registered as a trademark.
But can scent be graphically represented?
The registration process requires it to be graphically represented where each compound of the scent is segregated into its own distinctive chemical architecture, and so smell represented graphically via chemical compounds in its gaseous natures, which allows human senses to inhale and detect it easily.
The United States has allowed individualistic trademark registration to the famous scent of Clay-Doh. The Scent gained a significant degree of distinctiveness and public recognition, making it easier for the company to win the battle. The United States Patent and Trademark office in the year 1990 also granted Le Clarke the trademark registration for a fragrance for the first time. It was observed in this case that the public had already established a link between the brand and fragrance with the company. So it was possible to deceive the public had the proposed scent been used in any other product considering how popular and in-demand the scent was.
Australia’s trademark legislation requires the application to be capable of graphical representation for a scent to acquire registration. Such a representation must be by way of verbal description elaborating the scent with that of the subject matter- e.g., “scent of lavender.” On the other hand, Canada’s newly introduced Bill C-21 has now amended trademark to include scent amongst other non-traditional trademarks like sound, taste, and even texture. Hong Kong also allows registration under their Hong Kong Trademark Ordinance for scent marks and has been one of the few countries that have encouraged firms to register scent marks. Morocco’s and South Africa’s trademark law has permitted registration of smell marks, and Thailand, too, has considered registration in light of the much-awaited regulations that are yet to come into force. India, too, just like Australia’s trademark law, faced the dilemma of graphical representation of the smell mark with the help of the chemical formula found in the odor and has been amongst countries like Brazil, China, and Mexico that have opted to not trademark scents. The singular trademark registration of smell marks has not yet been incorporated in the provisions of the Draft Manual of Indian Trade Mark Act,1999.
But then what about a motion trademark? Would consumers associate the look and feel of motions with a product and prefer a product that suits their taste in motion just like they would with the scent of their liking? There is a continuous battle for a product to acquire individual identity and recognition in today’s globalized world where producers chase to deliver unique brands to gain profits and loyal customers. The increase in marketing strategies has resulted in stringent mechanisms of acquiring registration by fulfillment of strict legal requirements under the law and so, motion trademarks must depict both
– distinctiveness as well as;
– Functionality (act as a unique source of use and recognition)
Because of the uniqueness a motion trademark carries, getting a motion trademark registered involves the usual trademark process characteristics. However, motion trademarks differ from two-dimensional trademarks. So for a motion trademark to gain successful registration, it must be able to click an individual connection with the product and stimulate instant recognition by the public, thus fulfilling the distinctiveness criteria and the recognition criteria. Apart from these two requirements, what is also essential is to demonstrate statistical proof and unique samples to signify ease of communal identification, thus calling for a complex level of scrutiny and facing its own set of challenges that may differ from the general trademark procedure.
For example, Toshiba’s famous multimedia mark of series of images makes it distinctive because it uniquely associates its products and services. Thus, striking a balance between distinctness and proportionate public recognition. In the United Kingdom, this motion trademark was the first to have acquired registration and has now encouraged many to come forward.
Another example would be the Lamborghini’s ‘car door’ motion, which was successful in registering as a trademark ‘ the unique motion where the door of the car or vehicle is opened causing the doors of the vehicle to slide up parallel to its body and subsequently rises above the vehicle in a parallel position. The PTO took certain conditions into check while granting registration, namely, an accurate drawing and a clear design demonstrating the specifics of the motion associated with the goods and services. Thus, functionality plays an equal role in influencing trademark registration.
On an international level, many countries recognize protection to motion trademarks, but it comes with its own sets of requirements and limitations.
The Lanham Act recognizes multiple forms of brand recognition as acceptable to trademark protections. The Act also describes all factors associated with the five human senses capable of being distinguished between other products in the market to be the subject matter of prospective future trademarks. The United states identify trademark registration not only for two-dimensional marks but also extends it to motions, sounds, colors, and other non-conventional marks as well. The European nations have also slowly moved to extend protection to non-conventional marks. EUIPO in the year 2017 has made amendments to its earlier system of the need for “graphical representation” as an essential for trademarks, which was subsequently removed to accommodate for motion trademarks by stating that applications seeking motion registrations would have to be presented by showing a series of videos to identify a unique subject matter capable of being recognized by the public without confusion. On the other hand, India is a step behind as it has still not given recognition to motion marks to be awarded protection. The Indian Trademark Act of 1999 has recognized various marks to be given protection has still found motion trademarks to be a rather risky affair. The reason for this is many, but the main one happens to be the requirement of a combination of different media forms, which is often depicted as a mixture of both sound and accompanied by movement, which comes to a rather difficult task to be represented before the Trademark Registry. India has currently introduced a draft manual for “recognition” of a broader sector for trademarks in its Registry. It includes smell, color, shape, etc. This is a positive sign indicating that motion trademarks are just around the corner. India is gearing up to develop legislation that incorporates international standards in recognizing motion trademarks.
