Smell marks add a new fragrance to Indian trademark law practice: A new scent in India’s IP jurisprudence

For the first time, the Trademarks Registry of India has accepted an olfactory (smell) mark for publication in the TM Journal. The trademark application is for “Floral Fragrance / Smell Reminiscent of Roses as Applied to Tyres”, filed by Sumitomo Rubber Industries.

With this development, India joins countries such as Australia, Costa Rica, the European Union, the United Kingdom, and the United States of America in recognizing smell marks. Under trademark law, a mark must be distinctive and capable of graphical representation to be registered.

In this case, the applicant used technology developed at IIIT Allahabad to create a graphical representation of the fragrance, based on the complex mixture of volatile organic compounds released by rose petals that interact with human olfactory receptors. The rose-like smell was depicted graphically as a vector in a seven-dimensional space, where each dimension represents one of the seven fundamental smell categories: “floral, fruity, woody, nutty, pungent, sweet, and minty”.

The criteria of graphical representation were well demonstrated and supported with scientific data, and accordingly, the application was accepted.

Furthermore, to establish the distinctiveness of the smell mark, it was argued that when a vehicle fitted with tyres containing the rose fragrance passes by, a customer perceiving the smell would be able to easily associate it with the tyres and their manufacturer (brand).

The contention of the applicant was to leave a very strong impression on customers as it would be in stark contrast with the smell of rubber that is usually expected while one is standing near a frequently used highway or a road.

Also, in this case the smell of roses had no direct relationship with the nature, characteristics, or use of tyres and was, therefore, arbitrary in its application to such goods.

Another key feature to note is that the smell mark should not serve the functional purpose in the product in this case, the tyre, hence it satisfied this condition, unlike the scent of a perfume or air freshener, which is central to the product's function.

While this is a great move as we all can smell IP now, and brands can add a USP in their product line in the coming days to make themselves distinct from the rest but we need to see how Indian brand owners perceive this to leverage the use of smell marks in their products.

However, the challenge remains to represent it in a graphical representation with the scent composition and compounds being extracted and bring about the exact defining of the fragrances. While other jurisdiction like USA allows to send the sample of the product to the IP office to smell the mark and feel with the olfactory senses.

India too needs to consider this type of an arrangement to ease the registration and representation of the smell marks by brand owners. The bottom line remains that as long as the smell mark is clear, precise, self-contained, intelligible, objective and is represented graphically, it shall be a good and fit case for acceptance.

To conclude, I smell a very good time for Indian TM practice in future with India recognising global trends to register non-traditional marks will now open a new avenue for non-conventional forms of branding and brand owner’s TM Registration.

(Author is CEO, Resolute IP Services LLP, Founder IPRAS and GI Practitioner)