India's First Ever SCENT TRADEMARK

Trademarks in India have always been registered in two categories: a Word mark or a Device mark (a graphical presentation). On November 25 this year, India approved its first-ever Scent Trademark for a tyre company.

In India, Trademarks are governed under the Indian Trademarks Act, 1999. This act defines trademark under section 2 (1) (zb): trade mark means a mark capable of (a)Being represented graphically and, (b)Which is capable of distinguishing the goods or services of one person from those of others and, (c) May include the shape of goods, their packaging and combination of colours.

The application filed by Sumotomo Rubber Industries Ltd. was initially filed under “WORD” mark category due to the absence of the olfactory/scent category the applicant wanted to apply for. The company Sumitomo Rubber Industries Ltd. applied for their trademark “FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES” in their trademark application under class 12 on a proposed to be used basis, in late march earlier this year. The application was outright rejected stating reasons that “mark is not distinctive and cannot be represented graphically under section 9(1)(a) & 2(zb) of Indian Trademarks Act, 1999.”

During the multiple proceedings, submissions and hearings, registry appointed Mr. Pravin Anand as an impartial amicus curae and was suggested by him that an olfactory mark can be registered as trademark because (a)It's not inherent to the function of the tyres. (b)It has its own distinctiveness as the applicant has been using the smell trademark since 1995 and had requisite certificates registered in United Kingdom. The agent of the applicant, from the help of professors from IIIT Allahabad developed a 7 Dimensional (7D) vector to graphically represent the scent.

The submissions to the registry included many examples of olfactory and non-traditional trademarks. In the U.K. the applicant has acquired the olfactory Trademark in 1995 as well as Dart Flights unique scent. in the U.S.A. a sewing thread trademarked a specific scent of “fresh floral fragrance”. In India itself, Cadbury acquired the trademark for a particular shade of purple owing to its long usage and distinctiveness.

These submissions alongwith hearings led the registry to grant trademark scent to Sumitomo Rubber Industries Limited. This approval is historical in nature as it is a big step to accept non-conventional trademarks in India. Eventually this can open doors for many upcoming categories in India such as Unique sounds, Distinct Fragrances trademark for perfume, Distinct Spa aromas, Particular Taste of Food & Drinks and many more.

Article by - Alakh Tiwari