Smell, Sound and Taste – Getting a Sense of Non-Traditional Marks

If you heard a familiar, comforting sound associated with a particular kind of tea, would you be more likely to choose it? How about the smell of freshly cut grass emanating from tennis balls – would they make you a winner? Or mint-flavored tennis balls for your dog – would fresher breath not be welcome? Marketing specialists would like us to think so, and these are only some of the subtle ways manufacturers get us to recognize their products. But just how far can trademark registration be stretched to protect these innovative ideas?

Smell is said to be one of the most potent types of human memory, and businesses show increasing interest in pairing pleasant scents with their products. To obtain registration of a smell mark applicants must be able to visually represent the product’s scent and must show it is distinctive from the product itself. A bottled sample of the smell for example would decay over time and could therefore not be kept on a trademark register. But how does one represent a smell in a visual way? Writing down the chemical formula for a smell is problematic as it is deemed to represent the substance rather than the smell of that substance. Any written description of a smell must be so precise that that particular smell would not be confused with any other.

An additional obstacle to smell mark registration is that the smell must not result from the nature of the good itself. For example, an application by Chanel to register its well-known No. 5 fragrance as a smell mark in the United Kingdom was unsuccessful on that count – the scent of the perfume being the very essence of the product. However, some smell mark descriptions have met the distinctiveness test and been successfully registered, such as: a Dutch company’s tennis balls with the scent of newly mown grass; and UK registrations for tires with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer.” The Office for Harmonization in the Internal Market (OHIM), however, does not agree with the granting of the two UK registrations.

Representation of sound marks

In the case of sound marks, alternative methods have emerged for their visual representation: depictions by oscillogram, spectrum, spectrogram and sonogram are now being accepted. Such representations must be handled carefully in order to meet the requirements of individual trademark offices.

In 2003, the Court of Justice of the European Communities ruled in case no. C-283/01 that a trademark may only consist of a graphically represented sound – such as by images, lines or characters – and that its representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Court specifically excluded written descriptions that say: the sign consists of the notes making up a musical work; or that it is the cry of an animal; an onomatopoeia; or simply a sequence of musical notes. This created some confusion as to possible alternative means of representation.

In recently defined areas of convergence concerning the representation and description of non-traditional marks, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) agreed that “Offices may require that the representation of sound marks consist of a musical notation on a stave, a description of the sound constituting the mark, or an analog or digital recording of that sound – or of any combination thereof. Where electronic filing is available, an electronic file may be attached to the application. However, for some jurisdictions, only a musical notation on a stave may be considered to adequately represent the mark.”

OHIM decided in 2005 (No. EX-05-3) that applicants could attach a sound file to electronic or online trademark application forms – this still applies. The attachment must be in MP3 format, must not exceed one megabyte and must not allow loops or streaming. Its purpose is to further clarify and support the application. INLEX IP Expertise was the first applicant to successfully obtain a registered Community sound mark using this option. Deutsche Telekom has also registered its jingle as a sound mark under the Madrid Protocol.

Taste marks

Taste marks may be easier to represent graphically – the SCT reports that “the graphic representation requirement was satisfied by using a written description of the taste and an indication that it concerns a taste mark” – but the hurdle of distinctiveness is even harder to overcome as are assertions concerning functionality.

OHIM rejected the pharmaceutical company Eli Lilly’s attempt to register the taste of artificial strawberries noting in its decision in case R 120/2001-2, “Any manufacturer… is entitled to add the flavor of artificial strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste… Moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product…” A similar attempt by N.V. Organon to register an orange flavor for pharmaceuticals was rejected by the USPTO¹. As the Trademark Trials and Appeals Court pointed out, it is difficult to define how taste can act as a trademark when consumers only taste goods after purchase.

As work on non-traditional marks progresses and the business world continues to create and market new types of products, we may see a fascinating transformation of the world of trademarks.

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