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rose scented tyre trademark: Making it the first smell mark to be accepted for advertisement in India, The Trade Mark Registry, India has accepted a Japanese company’s application for “floral fragrance /smell reminiscent of roses” as applied to tyres.
At the outset, Controller General of Patents, Designs and Trade Marks Dr Unnat P Pandit noted the trade mark application fell “under the category of rarest applications and challenges legal boundaries of the trade marks law in India”.
The order highlighted, “The application is the first of its kind, which in effect seeks registration of a smell mark in India.”
Sumitomo Rubber Industries Ltd., a Japanese company, sought the registration of trademark “FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES” on March 23, 2023 in class 12 – tyres for vehicles – according to the Nice Classification (established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks) on a “proposed to be used basis”.
Class 12 of trademark classification deals with the vehicles and their parts.
On November 21, Dr Pandit observed that the trademark question “satisfied the criteria” laid down for registration under the Trade Marks Act, 1999, being “clear, precise, self-contained, intelligible, objective and represented graphically”.
“The trade mark is hereby accepted. The Registry is directed to advertise the trade mark application…for ‘FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES’ in class 12 on a ‘proposed to be used basis’ in accordance with the 11 provisions of Section 20 of the Trade Marks Act, 1999 as an ‘olfactory mark’,” the order held.
The Trade Mark Registry acknowledged the “scientific, technical and legal inputs” of the amicus curiae noting the “complexity” of the plea, particularly, the graphical representation of the smell mark under reference.
The registry also lauded the role of professors Pritish Varadwaj, Neetesh Purohit and Dr Suneet Yadav of the Indian Institute of Information Technology, Allahabad
who prepared the graphical representation.
The Registry was accordingly directed to advertise the mark on a proposed to be used basis as a olfactory trademark along with the graphical representation submitted during the proceedings.
The Registry also acknowledged the scientific, technical and legal inputs submitted by the amicus curiae given the complexity surrounding the facts of this application, specifically the graphical representation of the smell mark under reference.
The application was filed by a Japanese company Sumitomo Rubber Industries Limited, on 23 March 2023, seeking registration of this trademark. This application is the first of its kind, which seeks registration of a smell mark in India.
‘Distinctive’ smell, other findings
According to the order, first, the application was examined and was objected under Sections 9(1)(a) (Absolute grounds for refusal of registration) and 2(zb) (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) of the Act for lacking distinctiveness and not being supported by a graphical representation, which is a mandatory requirement under the Act.
The scope of protection sought in the application was not clear. Accordingly, an examination report was sent to the company.Then, a response to the examination report was filed by the Applicant.
On the point of distinctiveness, the trademark body noted when a vehicle fitted with tyres containing the present smell passes by, a customer perceiving the smell in question will have no difficulty in forming an association between the goods (tyres) and the source of the goods (company).
“This experience would leave a very strong impression upon such a customer as it would be in stark contrast with the smell of rubber that is usually expected while one is standing near a frequently used highway or a road. Also, the scent of roses bears no direct relationship with the nature, characteristics, or use of tyres and is, therefore, arbitrary in its application to such goods. I have therefore no hesitation in holding that the trade mark in question is distinctive.”
The order further noted that word marks were “more easily perceptible” and a large number of variations around the same word might get registered as different trade marks by different trade mark 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,” it said.
Case
The company, represented by a team from Cyril Amarchand Mangaldas comprising Swati Sharma, Partner (head – intellectual property); Revanta Mathur (Partner) and Sannat Chandna (Principal Associate – Designate), submitted that the instant mark is a distinctive smell mark which encompasses the potent floral scent of roses that is incorporated into the tyres produced by them.
“The enduring nature of floral fragrances has the power to evoke memories. The company has infused the floral fragrance of roses into their products as an integral component of their business strategy and product development since the year 1995,” the company argued.
It also argued before the trade marks registry that they have successfully registered as ‘a floral fragrance/smell reminiscent of roses as applied to tires’ IN UK, which was the first instance of the UK recognising an olfactory/smell trademark. The registration in the UK is indicative of the fact that a smell mark has been considered as distinctive and capable of registration as a trademark.
They submitted that the company has invested significantly in research and development, pioneering the incorporation of scents into their tires, creating a distinct and memorable sensory experience for consumers.
On the question of distinctiveness, the company submitted that there is no smell that parallels the smell of roses, and therefore, the moment we say the smell of a rose, it is clear to the perceiving public what the smell is.
In the circumstances, the counsel argued, not only is the smell of a rose well-known, but the product in question, namely rubber tyres, are also quite clear and distinct. Because of this unique combination and the smell of the product, no further description is required. Further, the examination of a smell can be easily conducted simply by imagining the smell of a rose as applied to tyres.
Significance of the smell trade mark in India
This is the first ever smell mark to be accepted in India. In the submission of the supporting arguments, the amicus curiae informed the registry that Indian trademark law does not expressly mention olfactory trademark, it also does not exclude them.
Internationally, many countries of the world have recognised scent marks as trade marks and the same have been granted registration, as being capable of distinguishing the goods of the owners. Countries like Australia, recognize scent marks as a category of trade mark.
