AN ANALYSIS DETERMINING WHETHER SMELL MARKS HAVE A PLACE IN THE GARDEN OF INDIAN TRADE MARK REGIME
-AAK
ABSTRACT
The bastardisation of trademark protection has gone on long enough to now cover entities and terms that operate far beyond what was meant to be covered when the TRIPS Agreement and the Indian Trade Marks Act came into effect. Trade marks were meant to cover goods and services, not people, akin to personality rights seen now. The purpose was to protect established goodwill from exploitation; with the product’s look or its packaging serving as a source identifier, not necessarily the attention seeker. According to the Abercrombie norms, the framework should cover recognizable terms, at that also, mostly fanciful or unique terms that show genuine creativity and not common slang that could be used in regular parlance as is seen today. The reason I bring forth these foundational precedents first is not to criticise the liberal granting of statutory legal protection like a senile old man, but to question the legitimacy of the format going forward. Recently, in India, a mark was accepted by the Trade Marks Registry for a smell that a manufacturer had managed to imbue into its tyres decades ago. An acute observation of the aforementioned principles and norm would show that the medium by itself was meant to be visual. Hence why this article attempts to dive headfirst into the legal framework and determine whether an overhaul is needed with the rise of such unconventional trademarks. The purpose of this article is not to question the veracity of the means used by the mark’s proprietor to denote their claim, but to question whether a non-visual mark is acceptable under our existing framework, as well as the commercial justification behind protecting a specific smell in the first place. Just because a smell can remind you of Cinnabon Cinnamon Rolls or of a particular tennis ball, can the entity behind the product trademark it?
Keywords: Smell Mark, Visual Medium, Graphical Representation, Western Norms, Regime Change
SOMETHING FRESH LIKE ROSES
A mark was registered by Sumitomo Rubber Industries Ltd., 6-9, 3-chome, Wakinohamacho, Chuo-ku, Kobe, 651-0072, Japan; for “FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES” in TM class 12 (tyres for vehicle), on a “proposed to be used basis”[1]. The application itself was the first of its kind, which in effect later achieved a first of its kind registration as a smell mark in India. The proprietor had submitted in their application that, “Under modern business conditions a trademark performs four cardinal functions: (1) identifies products and their origin; (2) guarantees its unchanged quality; (3) advertisement; and (4) creates an image of the product”. It also submitted a detailed list of smell marks that have been granted protection in different jurisdictions and the examination report mentioned that while Indian trademark law does not specifically mention anything about scent or olfactory marks, eadem ratione, it also does not explicitly state that the same cannot be registered in the first place. The Registry in agreement with this analogy stated, “Considering aforementioned aspects pertaining to the trade marks, it is a possible moot that a ‘smell’ can be afforded the protection of trademarks, too.” While these conceptual standards make sense with the global ethos of trademarks, the question that should have been more elaboratively analysed by the Registry is whether the same is applicable under the Indian regime. India’s statutes allow for only visual marks when interpreted textually and a directionless ‘I guess so’ for other sensory marks when interpreted liberally. It is with court precedents and a centre established rule introduced decades later that more creative works such as audio clips and designs of reputed works were finally given recognition on rudimentary metrics.
The medium by itself is meant to be visual so as to protect a mark’s owner against exploitation only to the extent that it prevents consumer confusion and unfair competition while protecting the distinctive identity of commercial enterprises as well as their offerings in the marketplace. Word marks are more easily perceptible and a large number of variations around the same word may get registered, as different trademarks by different proprietors. However, in the field of smell marks a large number of variations around the smell, for instance the smell of roses, may not be possible. Therefore, closely spaced trade marks may not get registered in the field of smell marks. However, this cannot also be the reason for refusal of a trade mark application. Different fields of trade and commerce may require special treatment to safeguard the interests of businesses and their customers.
Therefore, if unconventional marks do takeover our commercial jurisprudence for a product-oriented system that is favoured globally then how is it implemented in India. Would we overhaul our trademark legislation? Would we then have to overhaul our entire IP regime to facilitate this statutory change? How would we interpret (aesthetic) functionality to also ensure that an olfactory mark does not overlap with a patent? On what basis would we protect such marks? First to use trade mark or the first one to file for it? More clarity on this topic would be needed on this topic first to decide the protection granted for naturally occurring smells. What would happen if two brands use a similar natural scent to sell their products?
THE EXISTING ZEN GARDEN
Even a broad reading of the Trade Marks Act[2] would make it evident that the medium it caters to is meant to be visual. Whether it is the recourse mechanism under section 29, a collection of marks under chapter VIII, or the sections for altering an application filed with the Registry; it all (in my interpretation) suggests commercial exploitation of a medium that is visual in nature. A literal and harmonious interpretation of the defining statutes would show that a trade mark is not only granted to any aspect of a good or service that is capable of distinguishing it from those of competitors, but that it requires a certain kind of medium/ representation to prove the same. While most people focus on the graphically representable part of section 2(1)(zb) to prove their claim of unconventional marks, it is the prior “a mark” part of the statute that still is the most relevant in my opinion. Under section 2(1)(m) a mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; and therein are features, or distinctive characteristics, that can be perceived through sight alone. Now the Trade Mark Rules of 2017[3] do address this issue to a limited extent but I would get to that later. The following definitions are what have been provided in the Act for representations that are liable to be considered a trade mark under the Indian regime: –
Section 2(1)(zb): “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and–
Section 2(1)(m): “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
This is further clarified by section 2(2)(b) of t1he Act which states, “(2) In this Act, unless the context otherwise requires, any reference–
……………….(b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark;”.
A basic reading of the aforementioned sections would show that items/ characteristics/ features so stated of a good or service, or its packaging, is defined as a mark if it includes any of the visual/ aesthetic characteristics listed, or any combination of such thereof. The definition immediately invalidates all unconventional marks except “shape” as the same may be included as an aesthetic feature of the product or its packaging. This definition with the very basic texts it encapsulates, disallows most unconventional marks to be considered as a “mark” in the first place, and subsequently restricts them from being treated as a trade mark under section 2(1)(zb) of the Act. Therefore, with a simple textual interpretation of these sections it could be seen that unconventional, or non-conventional marks are not trademarks and therein not entitled to be protected under this statutory regime. Similar notions for the textual understanding of basic terms has been endorsed by our Hon’ble Apex Court for all kinds of laws and regulations. A five-judge bench in Commissioner of Customs (Import), Mumbai v. Dilip Kumar And Company[4], quoted Justice G.P. Singh from “Principles of Statutory Interpretation” stating that, “legislation in modern State is actuated with some policy to curb some public evil or to effectuate some public benefit. The legislation is primarily directed to the problems before the Legislature based on information derived from past and present experience. It may also be designed by use of general words to cover similar problems arising in future. But, from the very nature of things, it is impossible to anticipate fully the varied situations arising in future in which the application of the legislation in hand may be called for, and, words chosen to communicate such indefinite ‘referents’ are bound to be, in many cases, lacking in clarity and precision and thus giving rise to controversial questions of construction.”
Unfortunately however, our judicial system favours the Golden rule of interpretation and is following in the footsteps of the European Union (EU) as well as the United States of America (USA) to find that unconventional marks are allowed even in the Indian regime with a harmonious (if not overly broad) interpretation of the two sections. The golden rule of interpretation has been used to contextualise the legislative intent behind the Act and allow for the existence of such trademarks, especially after the Parliament allowed for the same via the implementation of the Trade Mark Rules (hereinafter the “Rules”). Rule 26(4) and 26(5) of the Rules allowed for the registration of shape and sound marks respectively with the Registrar. The Legislature has still not amended the 1999 Act since 2010 and its intent is still loosely interpreted by courts with the precedents they have established in past and the data they have at hand. While the evidence in hand still only seems to allow for audio and shape marks, the Trade Marks Registry (not sure if it would count as an organ of Central Government) has gone ahead and also registered a smell mark because a global tyre manufacturer was able to imbue its tyres with a unique smell. A smell that the manufacturer registered internationally decades ago and is now able to graphically represent to fulfil the representation requirement under section 2(1)(zb); hence circling the conversation back to the start of this statutory analysis on the correct interpretation of sections 2(1)(m) and 2(1)(zb).
REFERENCES
[1] Registry, Trade Marks. ORDER NO. TMR/DEL/SCH/2025/16. 21 Nov. 2025.
[2] Trade Marks Act, 1999.
[3] Trade Marks Rules, 2017.
[4] AIR 2018 SC 3606.
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