The new EU Regulation & olfactory trademarks

25 April 2016

Last March 23, 2016 the Regulation no. 2015/2424 entered into force in order to amend Regulation no. 207/2009 on Community Trademark and its corresponding Regulation no. 2868/95 of implementation. 

The new regulation contains multiple amendments, among others terminological ones, such as the change of name of the Office for Harmonization in the Internal Market (OHIM), which from now on will be known as the European Union Intellectual Property Office (EUIPO), and the replacement of the name “Community Trade Mark” (CTM) by the name “European Union Trade Mark” (EUTM).

Nonetheless, one of its most remarkable novelties it is the deletion of the requirement of graphic representation from the concept of trade mark set out in Article 4 of Regulation no. 207/2009. The new concept of EU trademark will be applicable as of October 1, 2017. 

CURRENT CONCEPT OF TRADEMARK

NEW CONCEPT OF TRADEMARK

“A Community trade mark may consist of any signs 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”.

An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings; and

(b) being represented on the Register of European Union trade marks, (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

 

So far, the requirement of graphic representation of a sign had been one of the main barriers for olfactory trademarks to be registered. Such requirement was interpreted by the European Court of Justice in 2002 in the Sieckmann case (C-273/00) in the following terms (paragraph 55):

“[…] a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

In light of such interpretation, the following graphic means have been considered not valid for representing an olfactory trademark, in particular, for not meeting the requirements of clarity, precision, self-sufficiency, easy accessibility, intelligibility, durability and objectivity:

1. The description of the smell, as established by the ECJ in Sieckmann, as well as by the OHIM in its decision 12 December 2005, R 445/2003-4, which confirmed that the description of a smell is not a valid mean even when the smell is a simple one easily recognizable by everyone through experience. In this regard, the criteria applied in the famous decision of the OHIM issued on 11 February 2009 (R 156/1998-2), which allowed the registration of an olfactory trademark by the means of a description (namely, “the smell of fresh cut grass” for tennis balls) must be regarded as an exception overcome by the above mentioned case law. 

2. The chemical formula of the substance from which the smell derives, as set out in Sieckmann. 

3. The deposit of a scent sample, as ruled also in Sieckmann. 

4. The image of the element or substance from which the smell derives, as established by the Court of First Instance in its judgment dated 27 October 20005 issued in the case the “Odeur de fraise mûre” (T-305/04).

5. The combination of any of the aforementioned means, as set out in the Sieckmann and the “Odeur de fraise mûre” cases.

Now the representation of a sign by the means of images, lines or characters is no longer required, however it is still necessary that such representation fulfills the remaining requirements established by the ECJ in Sieckmann, as pointed out by explanatory statement no. 9 of Regulation no. 2015/2424: 

“A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Thus, the following question arises: is there any technology available that enables to represent a sign according to such requirements? Apparently, there is. The “scent dome” (or smell sampling via PC) is a peripheral device attachable to computers that creates smell simulations for PC users. The inner part of the device contains replaceable cartridges filled with aromatic oils, each of which is translated and encoded in a binary mode. Following the digital instructions sent by a computer program or by a digital scent track on a website, these aromatic oils will be heated, so as to vaporize, and released, either individually or in a combination, in order to create thousands of different smells which will be emitted through the device to the nose of the PC user.  

Unlike scent samples, the smell released by a scent dome does not face the problems of lack of stability and durability. Moreover, if the digital instructions are given correctly, the olfactory outcome will be precise and, despite the fact that after its emission from the device the scent might soon evaporate, the emission can be repeated as many times as one wishes in order to obtain again and again the precise smell. 

The requirement of easy accessibility could be met if those interested in consulting the register electronically have a scent dome attached to their PC.  Simultaneously, the EUIPO would also need to modernize itself and incorporate this technology within its day-to-day work tools. In relation to it, it may be particularly interesting Article 18.8 of the Trans-Pacific Partnership (TPP) treaty, signed last February 4, 2016 by Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam. Said article not only establishes that a trade mark should not be necessarily visually perceptible in order to obtain protection, but also that parties to this treaty must make their “best efforts” to register olfactory trademarks.

Finally, it must not be disregarded that, despite the deletion of the requirement of graphic representation from the concept of EU trademark, an olfactory trademark shall only be registered if it also meets the requirement of distinctiveness, in other terms, if it is capable of distinguishing the products and/or service in respect of which it is supposed to be used. In this regard, when an olfactory trademark is to be used in connection with products which usually have a smell (e.g. candles or insecticides with masking smells), or in which the smell is the product itself (e.g. perfumes or fresheners), such trademark will be more likely to be regarded as devoid of distinctive character and, therefore, to be denied protection. In such cases, protection could still be sought by the means of copyright and the law against unfair competition. On the contrary, when an olfactory trademark is to be used in respect of products which usually do not have a smell (e.g. tennis balls, wheel tyres, darts, shoe soles, etc.), it will have higher chances to be granted protection. 

Are you considering taking a step into smell branding? Would you like to know how to prevent others from copying your scent? At IP HILLS we will be pleased to assist you.

2016 © Article written by Esther Gomez, IP HILLS (all rights reserved)

 

 

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