Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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Although specifically mentioned in section 6 of the Trade Marks Act 1995 under the definition of "sign", it appears unlikely that any Australian applications will be filed in 2007 for protection of a scent mark.  In fact, there are currently no live applications on the Australian Register.  Regardless, there is increasing discussion and attention on non-conventional marks, particularly smells, in the light of brand owners being under a constant challenge to release products that are more distinctive than those of their competitors.  The use of "white tea, the calming new scent of Westin" is a good example of how traders are seeking to lure customers by appealing to their noses.

Different approaches for dealing with scent marks have been adopted across numerous jurisdictions.  In summary, European Offices have rejected them, the United States is generally more liberal in accepting them and Australia falls somewhere in the middle.

Australia

The Australian Trade Marks Office Manual of Practice and Procedure states that the capability of a scent to distingush goods and/or services should be decided "on the basis of whether other traders would want or need to use it in the ordinary course of their business, without improper motive".

The registrability requirements are outlined as follows:

• the application must include a graphical representation of the scent mark.  This could be a precise verbal desciption.
• the graphical representation must be in a form that conveys information to the ordinary person allowing them to identify the mark.  Highly technical data will not be accepted as a graphical representation.
• an actual sample of the scent is not required but may need to be adduced during examination.
• a precise and accurate description to be included as an endorsement in the application must also be provided.

A total of 7 applications have been filed so far in Australia.  The only application found to be acceptable by the Australian Trade Marks Office was Trade Mark No 700019 covering darts in Class 28 having the strong smell of beer.  Despite its inaugral success this application never proceeded to registration.

United States

In the United States scents can be protected as trade marks provided they do not serve a functional purpose (TMEP § 1202.13).  In a landmark decision, (Re. Clarke, 17 U.S.P, 1990) the Trade Mark Trial Appeal Board allowed registration of an arbitrary, non-functional scent ("high impact, fresh floral fragrance reminiscent of plumeria blossoms") for sewing thread and embroidery yarn, Reg. No. 1639128, but subsequently abandoned.  Current registrations include "a grape scent" and "a strawberry scent" for "lubricants and motor fules for land, vehicles, aircraft, and watercraft" Reg. No. 2568512 and Reg. No.2596156 respectively. However, to date few scent marks have been registered or even applied for. 

Europe

Theoretically, the European Union Office for Harmonisation for the Internal Market (OHIM) recognises that scent marks are eligible for trade mark registration.  However, in practice a contradictory position exists; there is no bar to filing an application for a scent mark, but at the same time, there are no acceptable methods or techniques for describing such scents.  The 2002 decision “Sieckmann” of the European Court of Justice (ECJ) essentially concerned the question of what is an acceptable representation of an olfactory trade mark.  The ECJ held that “a trademark may consist of a sign which is not in itself capable of being perceived visually, as long as it can be presented graphically by means of images, lines or characters and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

As a result of the Sieckmann decision, it has and will continue to be very difficult, perhaps impossible, to register scents regardless of whether they are intelligible to the majority of the public and capable of depiction in the form of a written description. 

As marketing techniques continue to develop and technology further enhances ways to recreate and infuse odours, there is a possibility that we will see an increase in interest towards scent marks.  A recently published paper by Bhagwan., et al (MPRA)  that explores the economic rationale for scent marks makes further interesting reading on this topic.