If it smells like a trademark and it functions like a trademark, it might be a trademark.
Rose-Scented Tires
Sumitomo Rubber Industries has successfully applied for the registration of an olfactory trademark in India. It is the smell of a rose, as applied to tires. India’s Trademark Registry has now accepted it for advertisement.
This is not the first time Sumitomo has secured trademark protection for its smelly tires. In fact, the company’s rosy tire was the first smell mark registered in the United Kingdom, back in 1996.
It’s a Smell World
Since the U.K.’s venture into scent trademarks, smell trademarks have been approved in several other jurisdictions around the world.
In 1999, the European Union accepted an application to register the smell of freshly cut grass as a trademark for tennis balls. It quickly closed the door to scent marks, however, in 2002. In Sieckmann v. German Patent and Trademark Office, trademark protection was sought for a “balsamically fruity” scent with “a slight hint of cinnamon.” The ECJ ruled that a chemical formula did not represent the odor, the written description was not sufficiently clear, precise and objective, and that a physical deposit of a sample of the scent did not constitute the “graphic representation” the applicable trademark law required. This closed the door to smell marks in the EU for many years.
Scent mark registrations have been issued in the United States, though there are only a little over dozen of them. Examples include Play-Doh, Power Plus fruity-scented vehicle lube, and minty fresh bowling balls.
The non-functionality requirement is the biggest obstacle for scent trademarks in the United States. The scent must be non-functional and serve only as a source identifier. Smells intrinsic to the purpose of a product will not qualify. So no trademark protection for the smell of a perfume or air freshener. And sorry, Burger King, probably no trademark for the smell of charred meat, either.
“Graphical Representation”
India’s statute requires trademark applicants to provide a graphical representation of the mark. This is what has stood in the way of smell claims in India all this time. Sumitomo, however, figured out a way to do it. It created a representation of the odor in “olfactory space.”
It worked.
Will Flavor Be the Next Frontier?
It is unlikely that flavors will join smells as registrable brand identifiers. Although theoretically possible, no flavor has ever been registered as a trademark in the United States. The USPTO has expressed doubt that a flavor could ever function as a trademark because it is functional. (TMEP 1202.13). Also, although a dog might do it, consumers normally do not taste a product to determine its origin before deciding whether to buy it. Merchants probably would frown on the practice, as would other customers in the store. Hopefully, stores do not allow dogs to sample products intended for human consumption, either.
Need help registering a non-traditional trademark? Contact attorney Tom James.