The Registration of Smell Trademarks in Europe: another EU Harmonisation Challenge
© 2003 Carsten Schaal. All Rights Reserved.

A. Introduction

Imagine, you are sitting in the cinema in a very nice and comfortable seat, watching a wonderful scene from the countryside and you can smell the fragrance of blooming flowers, the smell of soil or the typical odour of the horses standing on the meadow. Or imagine you are on the internet, visiting the website of e.g. ‘Starbucks’ and you can smell the aroma of freshly roasted coffee-beans.

Everyone, who thinks that these are just dreams of the future, is not quite aware of  the latest state of engineering. By now, scientists work on the calculated use of smells in such cinema seats[1] and there is already a prototype called I-Smell that spreads fragrances and smells on the Internet.[2]

In the late 1990’s unconventional trade mark forms such as sounds (audible), signs (visual), tastes (gustatory), touches (tactile) and smells (olfactory)[3] have become more important. The industry seeks to invent new products in order to present more sensory consumer goods to the overwrought customers. Although these possible trade marks have not yet reached a high acceptance among lawyers, jurists and the courts, they are of common use in marketing and practitioners are familiar with the sensoria as an essential part of an innovative trade mark- and product strategy.[4]

Such new trade marks bear a high potential of economic assets and of innovative creations, which are necessary for a growing and competitive European Union (EU) Internal Market.

The first step to a harmonization of the EU Market concerning trade marks was laid down on December 21^st 1988 with the First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks. Another step was the Community Trade Marks Regulation (CTMR) EC/40/94 of December 20^th 1993, which declared under its Art. 2 the establishment of the ‘Office for Harmonisation in the Internal Market’ (OHIM) for trade marks and designs.

Accordingly, the Member States implemented the Directive 89/104 EEC into their national laws, e.g. the United Kingdom (UK) in the Trade Marks Act 1994 and Germany in the ‘Markengesetz’ (MarkenG) of 1995.

Although the mentioned Directive, the Regulation and the amended State Laws already took into consideration the new trade mark forms such as sounds, signs and smells, the major problem that endures is the requirement of ‘graphical representation’ of the mark, which can be found in each one of those statutes.

Therefore, the scope of this paper is to have a closer look at this requirement of graphical representation and it will be shown in which rare cases the registration of an olfactory trade mark has been successful. Further on, the important case of Ralf Sieckmann v. Deutsches Patent- und Markenamt will be introduced and the recent judgment of the European Court of Justice (ECJ) of December 12^th 2002 will be scrutinized. This will result in some criticism, which includes a contrary opinion concerning the graphical representation, a brief concern on EU constitutional conflicts and an opinion on necessary amendments due to an innovative Internal Market.

B. The Requirement of ‘Graphical Representation’

The requirement of a ‘graphical representation’ of a trade mark in order to be registered was first mentioned in Art. 2 of the 89/104/EEC Directive, which reads as follows: “A trade mark consists of any sign 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.”

Exactly the same definition of a trade mark was laid down in Art. 4 of the Community Trade Marks Regulation EC/40/94 and similar provisions were transposed in Sec. 1 (1) of the Trade Marks Act 1994 and in Art. 8 (1) of the German MarkenG of 1995.

Especially, the broad definition in Sec. 1 (1) of the UK Trade Marks Act heralded the speculation of registering many new sensory signs that would undoubtedly not have been registrable before.[5] This was also confirmed through the government’s White Paper, recommending that the Law should “neither exclude nor make specific provision for the registration as trade marks of colours, sounds or smells”.[6]

The idea was to strengthen the possibility to register trade marks that correspond to other stimuli than sight, such as tastes and smells. Thus, there was much anticipation and eagerness to register such marks, which is proved by the application of three[7] ‘smell trade marks’ on the day the new Trade Marks Act 1994 came into force.

The most important requirements that need to be fulfilled in order to register a trade mark is the capability of “being represented graphically” (Art. 2 Directive 89/104/EEC; Art. 4 CTMR; Sec. 1 (1) Trade Marks Act 1994 and Art. 8 (1) German MarkenG) and the fact that a sign shall not be registered if it “consists exclusively of the shape which results from the nature of the goods themselves” (Art. 3 (1.e.) Directive 89/104/EEC; Art. 7 (1.e.) CTMR; Sec. 3 (2.a.) Trade Marks Act 1994 and Art. 3 (2.1.) German MarkenG).

The latter condition concerns e.g. products such as perfumes, where the smell cannot be registered as a trade mark, because the perfume’s fragrance results from the nature of the good itself.[8]

The importance of the former requirement has in fact practical reasons. The only way a trade mark can be recorded in the Register Office is by means of a piece of paper that is visible and can be read by everybody. Therefore, the sign must be expressed by writing, drawing or by a graph – that is, by a diagram representing a mathematical or chemical relationship.[9] The representation must be clear and precise and also intelligible to those who consult the register.[10] This consultation right includes of course every manufacturer - who may seek to register a similar sign – but also every consumer and the general public.[11] One has to remember that an infringement of a trade mark can result in legal proceedings and sanctions[12] and therefore everybody must be able to be informed about existing trade marks.

The Third Board of Appeal summarized in the Orange case that the graphical representation was “an imperative necessity for conducting the examination and registration procedure, including the search, and is commanded by the interests of the public and all owners of registered rights such as, for example, the owners of earlier trade mark rights who wish to determine the scope of protection of the application, and, finally, with regard to possible opposition proceedings”.[13]

Another reason for the requirement of a graphical representation and the need for a depiction on paper is the facilitation of the Register Office’s administration.[14] An institution like that with many thousands[15] of recorded trade marks would not be able to store the same amount of samples in their actual outward appearance.

 C. Applications on Olfactory Trade Marks

Some of the trade mark register offices in Europe, e.g. the UK Register Office, the Uniform Benelux Register Office, the German Patent- und Markenamt or the OHIM had to deal with applications on olfactory trade marks in the recent past. Only a few of those applications have been successful so far.

As already mentioned above, it started out with three applications of smell trade marks to the UK Register Office on 31^st October 1994, the day of the enforcement of the Trade Marks Act.

I. Chanel

The first remarkable case that day was the well-known perfume manufacturer Chanel, that sought to register the fragrance of ‘Chanel No 5’ as an olfactory trade mark in 1994.[16] It described its perfume as a “scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamont, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent is also being known by the written brand name No 5.”[17]

The Chanel application failed because of the above said second requirement that the shape of the product shall not result from the nature of the good itself. However, the smell of a perfume is the good itself and can therefore never be successfully registered as an olfactory trade mark. This is the current state of the laws[18] – if this can be viewed as a future orientated and an innovations promoting solution will be discussed later.

II. Sumitomo Rubber Co.

The second application was lodged by Sumitomo Rubber Co., which applied to register “a floral fragrance/smell reminiscent of roses as applied to tyres”.[19] This request was successful and became known as the first UK’s olfactory trade mark with the no. GB 2001416.[20]

III. Unicorn Products

Another success that day was registered by Unicorn Products, which sought to register a mark in class 28 in respect of ‘the strong smell of bitter beer applied to flights for darts’.[21] This olfactory trade mark was recorded by the UK Register Office under no. GB 2000234.[22]

IV. Vennootschap

The case of Vennootschap onder Firma Senta Aromatic Marketing led to a much more controversial debate concerning the registration of smell trade marks. The firm applied to register the “smell of fresh cut grass” for tennis balls[23] and it was initially rejected by the examiner on the basis that this description was not a graphical representation in means of Art. 4 CTMR of the olfactory mark.

The applicant appealed to the Second Board of Appeal of the OHIM arguing that the Community Trade Mark Regulation does not exclude olfactory marks from registration. Thus, the question that arises is whether a third party was given clear enough information that it would understand and have an unambiguous idea of what was being claimed.[24]

On February 11^th 1999 the Board of the OHIM annulled the contested decision, remitted it to the examiner and held that “The smell of freshly cut grass is a distinct smell which everyone immediately recognises 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.[25] 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.”[26]

This ruling sparked a sharp discussion concerning the graphical representation as it was alleged that the Second Board of Appeal did not give much thought to its meaning.[27] The appearance of a smell to a person is always a subjective matter – the smell of fresh cut grass could appear differently to townspeople than to a farmer during harvest. Therefore, the description of a smell only in words is that much subjective, that it cannot be sufficient for an objective representation according to Art. 2 of the Directive, Art. 4 CTMR, Sec.1 (1) of the Trade Marks Act or Art. 8 (1) of the German MarkenG.

Additionally, there is the problem of the language. When describing a smell, people usually refer to an object: a distinct fragrance smells like something (an object); thus, people do not describe the smell, but the object where the smell comes from.[28] That is because there is no clear and independent nomenclature[29] that can be used for the description of smells.

This OHIM judgment was hence not accepted in the literature.[30] The conclusion that followed is that a smell cannot be sufficiently be described only in words since that is too subjective.

V. John Lewis of Hungerford plc.

A more recent case is that from 2000 of John Lewis of Hungerford plc., in which the firm applied to register a mark in class 20 for furniture and parts and fittings therefore which consisted of ‘the smell, aroma or essence of cinnamon’.[31] Judge A. James dismissed the application and held that “he preferred not to follow the Second’s Board reasoning” [from the Vennootschap onder Firma Senta Aromatic Marketing case].[32] In any event, he argued that the smell of cinnamon was not as recognisable or distinguishable as that of freshly cut grass and that the interpretation of the smell of cinnamon could differ widely.[33]

This judgment shows that in the recent past the courts have been more reluctant to register a smell trade mark that is only being represented in words.

To conclude, only a few olfactory trade marks have been registered since the new provisions that were implemented according to the Directive 89/104 EEC came into force. Apart from the ‘perfume’ cases that cannot be registered because of the requirement that the smell shall not result from the nature of the good itself, the graphical representation of the smell still provides the most difficulties.

D. The ‘Sieckmann’ case and the ECJ’s Judgment of December 12^th 2002

The requested clarification concerning the courts rulings on the graphical representation of smell trade marks has just been given a few weeks ago by the European Court of Justice (ECJ) in Brussels.

To cite the aforementioned judgment, the ECJ held on December 12^th 2002 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”.[34]

With this decision, the famous case Ralf Sieckmann v. Deutsches Patent- und Markenamt[35] has come to an end.

The facts of the case were that Mr. Sieckmann applied to register an olfactory mark in classes 35, 41 and 42 at the ‘Deutsches Patent- und Markenamt’ (German Patent Office). The applicant submitted that “trade mark protection is sought for the olfactory mark (...) of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG, or for example, via the firm E. Merck in Darmstadt.

C6H5-CH = CHCOOCH3.”[36]

Additionally, Mr. Sieckmann delivered with his registration application an odour sample of the sign in a container and stated that the scent was usually described as ‘balsamically fruity with a slight hint of cinnamon’.[37]

The German Patent Office rejected the application on the grounds that it did not satisfy the function of a trade mark as it was not capable of being represented graphically.[38] Mr. Sieckmann appealed to the German Patent Court, which expressed its doubts as to whether an olfactory mark was capable of being graphically represented. Thus, the Court referred the following questions to the ECJ for a preliminary ruling:

“(1) Is Article 2 of the (...) Directive 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

(d) by a combination of the above mentioned surrogate reproductions?”[39]

 The first official statement to these questions was given by the Advocate General D. Ruiz-Jarabo Colomer on November 6^th, 2001.[40] While referring to the reasons why the requirement of graphical representation is an absolute necessity for the registration, e.g. clarity and precision to the reader of the register and intelligibility to its consultants[41], he rejected all four of the named forms of graphical representation.

First, it is argued, a chemical formula does not represent the odour of a substance, but rather the substance itself. In addition, such a formula is not sufficiently intelligible nor clear and precise and only very few people would be capable of recognising a smell from a formula.[42]

A written description of an odour does constitute a graphical representation; however, it is in itself not sufficiently clear, precise and objective.[43] This argument, that a depiction in words is not objective, was already used in the criticisms concerning the OHIM decision in the Vennootschap case. There, the words ‘the smell of freshly cut grass’ were deemed to be too subjective.[44]

Concerning the deposit of an odour sample, the view is taken that this does not represent a graph for the purposes of Art. 2 of the Directive 89/104/EEC. Moreover, it is referred to the volatility of the fragrance’s components that are not stable or durable and lead ultimately to the evaporation and disappearance of the smell.[45]

Finally, it is concluded that “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 requirements of graphic representability, nor is a combination of those elements able to satisfy such requirements, in particular those relating to clarity and precision.”[46] The reader of the register is then believed to be even more confused and a combination of several forms would increase the number of different interpretations that could be given to the mark.[47]

Thus, the ECJ followed the final submissions of the Advocate General Colomer almost identically and rendered the above said judgment.[48]

As an all Member States binding decision the ECJ’s ruling put a stop to the debate on the registration of olfactory trade marks. However, if this judgment is welcomed and if it is compatible with the objectives of an innovative EU Internal Market, will be discussed in the following.

E. Criticisms

I. Graphical Representation

There are quite a few voices in the literature that do regard the graphical representation of a smell as being possible.

Among several very sophisticated methods of recording smells, most noteworthy is the ‘gas chromatography’ (GC) or ‘high-performance liquid chromatography’ (HPLC).[49] These techniques can analyse the volatiles given off by the fragrance and the structural identification of the chromatographically separated active components can be further accomplished by instrumental methods like mass spectrometry (MS), nuclear magnetic resonance (NMR) or infra-red (IR) and ultraviolet (UV) spectroscopy.[50] The coupled GC-MS method e.g. can give both, the concentration and chemical identification of the active components of an unknown mixture.[51]

An optimal solution is regarded to be a combination of the ‘gas chromatography’, a description of the olfactory mark in words and a reference to the manufacturing process.[52]

Another approach is the representation of the structural formula of pure substances.[53] According to the ‘Law of Definite Proportions’[54] a compound always consists of the same elements with the same mass-proportions. Therefore, a pure chemical substance can be identified exactly according to its structural formula and is reproduceable at any time.

A detailed structural formula of pure substances is thus sufficient for the requirement of graphical representation under Art. 2 of the Directive.

The judgment of the ECJ, ruling that a chemical formula in not sufficiently precise and clear, must therefore be criticised – the preceding methods fulfil the requirement of graphical representation. The question, whether as to a normal person would understand the formula and have an idea of the smell, has nothing to do with the general possibility of a depiction in means of a graph.

Moreover, there are many legal issues that cannot be easily understood by ‘normal’ persons. Notwithstanding, general comprehensibility is still granted even if the advice of a solicitor needs to be sought.[55] An interested person might accordingly ask a patent agent for the subdivision of a chemical formula.

II. EU Constitutional Conflicts

More criticism needs to be mentioned concerning potential EU constitutional conflicts. First, under the ‘Protocol Additional to the European Convention for the Protection of Human Rights and Fundamental Freedoms’, the right of property under Art. 1 is granted to every EU citizen. Intellectual property and therewith the right to register trade marks is part of that property right. Since it is possible to represent olfactory trade marks in means of a graph, the rejection means an impediment of the right of property.[56]

Besides, the ‘principle of equal treatment’, being recognised as EC Community law, might be impaired if nationals of the EU are rejected to register an olfactory trade mark. They might be disadvantaged compared to residents of Australia, where such a protection of olfactory trade marks is possible. Since Australia became a member to the ‘Madrid Agreement Concerning the International Registration of Marks’ (April 14^th, 1891) with effect from July 11^th 2001, that protection can be transferred to the EU Member States.[57]

Such a discrimination means a constitutional conflict on EU level, which should be urgently avoided.

III. Art. 3 (1.e.) of the Directive 89/104/EEC

A last, but in my eyes extremely important point of criticism, concerns the provision of Art. 3 (1.e.) of the Directive 89/104/EEC and its related provisions under other statutes.[58] As already indicated above, this regulation prohibits the registration of “signs which consist exclusively of the shape which results from the nature of the goods themselves”.

The underlying principle is the ‘independence of mark and product’, under which a registration must be indicative of the origin of the goods.[59] E.g., items such as perfumes, where the smell constitutes the goods itself, cannot be registered.

In regards of product piracy, especially on perfumes, it should be asked whether this state of law is justified. Why should the smell of a perfume be treated differently than e.g. a sound trade mark, where the sound of the music or jingle is the sensorial perception itself, too?

It could also be argued that the perfume consists of a neutral carrier liquid that is mixed with many different aroma essences – then these essences could be registered trade marks as their gaseous aggregate state (the smell) is different from the (fluid) carrier liquid.[60]

Thus, while new market forms get more and more important and they are already infringed by enormous product piracy, the provision of Art. 3 (1.e.) of the Directive should be interpreted wider.

F. Conclusion

The criticisms in the last part of the paper have proved that the December 2002 decision of the ECJ cannot be accepted that easily.

Additionally, the new trade mark forms – and especially olfactory trade marks – bear a high potential of innovative goods and services. Therefore, a growing EU Internal Market also needs an innovative interpretation of the law. Hence, the graphical representation of smells should take place within the above mentioned methods and Art. 3 (1.e.) of the Directive should be interpreted broader and not apply to perfumes.

To conclude with the introductory said example – it should be obvious that ‘Starbucks’ would have a monumental interest to register the smell of their freshly roasted coffee beans on the internet as an olfactory trade mark. Europe – do not stop them!

© 2003 Carsten Schaal. All Rights Reserved.