The first trade mark for a smell has been accepted for advertisement in India.
In 2023 Sumitomo Rubber Industries Ltd. of Japan, applied to register a smell trade mark for «FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES» in relation to goods in class 12, namely, “tyres for vehicles”. The application makes reference to the fact that the potent floral fragrance of roses incorporated into tyres has been a staple of Sumitomo’s business since 1995.
The application was initially dismissed by the Indian Office on two grounds:
- a lack of distinctiveness because the Office considered the mark “FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES” could not distinguish Sumitomo’s tyres from those of others; and
- as not being supported by a graphical representation.
To address the second objection, Sumitomo relied on technology developed by the Indian Institute of Information Technology and submitted a graphical representation of a “rose-like smell”. The graphical representation in question is a vector in a seven-dimensional space wherein each dimension is defined as one of the seven fundamental smells: floral, fruity, woody, nutty, pungent, sweet and minty.
Sumitomo relied on well-established case law from Europe, principally the so called Sieckmann principles (the European Court of Justice in Sieckmann v. German Patent and Trademark Office) which established that for a smell to qualify for a registration, the graphic representation of it must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. These are principles which run through English and European practice on the registration of non-traditional trade marks.
On the first objection it was noted that there would be little difficulty for customers in forming an association between the product (tyres) and the producer (Sumitomo) owing to the scent of roses being markedly distinct from the expected smell of rubber and thus arbitrary for such goods.
While accepting the mark for advertisement, the Office noted that, for non-traditional trade marks, applicants would have to put forward a convincing case for registration.
This is an exciting development in Indian trade mark law and, if the mark is registered without opposition, it offers an opportunity for other brand owners with non-traditional trade marks to follow suit and gain protection.
For further information on trade mark protection in the UK and internationally, please contact Emma Pitcher or your regular Boult trade mark representative.
