Can Scent or Fragrance be Registered as a Trademark under the provisions of the Indian Trademark Laws?

[YAGAY andSUN]

Under Indian Trademark Laws, the concept of registering a fragrance or scent as a trademark is a relatively novel and complex issue. While Indian law does not explicitly address whether fragrance can be registered as a trademark, there are legal provisions and settled principles that can help guide the possibility of such registration.

Let’s explore this in detail, looking at the legal framework, settled legal positions, and real-life cases that offer clarity on the subject.

Legal Framework in India:

The Trade Marks Act, 1999, governs the registration of trademarks in India, including provisions related to non-traditional marks such as sounds, shapes, and colours. The Act, however, does not provide specific guidance on whether a fragrance or smell can be registered as a trademark.

1. Section 2(1)(zb) of the Trade Marks Act, 1999:
   • This section defines a trademark as "a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others."
   • It is important to note that the requirement for graphical representation in this section presents a significant challenge for the registration of scents or fragrances, as they are non-visual and cannot be represented through traditional graphical means (e.g., words, logos, or designs).
2. Section 9 of the Trade Marks Act, 1999:
   • This section lays down the absolute grounds for refusal of registration. It states that a trademark should not be registered if it is not capable of distinguishing goods or services or lacks distinctiveness.
   • While Section 9 does not directly address scents, the underlying principle of distinctiveness would still apply. A fragrance must be distinctive enough to identify the source of goods or services and must be non-functional (i.e., not a natural feature of the product or its composition).
3. The Trade Marks Rules, 2017:
   • The Trade Marks Rules, 2017, provide the procedures for registering a trademark. They also contain the requirements for filing a trademark application, but there is no explicit mention of scent marks.
4. Global Context under the TRIPS Agreement:
   • India, being a signatory to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, adheres to international standards for intellectual property. TRIPS allows for the protection of various types of trademarks, including non-traditional marks, but it is unclear whether scent marks are explicitly included under TRIPS. However, some jurisdictions, such as the European Union and United States, have accepted fragrance trademarks under specific circumstances.

Challenges in Registering Fragrance as a Trademark in India:

1. Graphical Representation:
   • One of the primary challenges in registering fragrance marks in India is the graphical representation requirement in Section 2(1)(zb) of the Trade Marks Act. A fragrance, by its very nature, cannot be represented visually or graphically, which makes it difficult to fulfil this requirement.
   • The Indian Trade Marks Registry, like most other jurisdictions, requires that a trademark must be capable of being represented graphically in a clear and precise manner. This criterion poses a significant challenge for scents, as they do not possess any form of visual or graphical representation.
2. Distinctiveness:
   • For a fragrance to be registrable as a trademark, it must be distinctive i.e., it must uniquely identify the source of goods or services and distinguish them from others.
   • The scent should be non-functional and not inherent to the product. If the scent is merely a feature of the product (e.g., the natural smell of a flower in a perfume), it may not be eligible for protection.
   • Acquired distinctiveness or secondary meaning is essential for a scent to be considered distinctive. This means that the public must associate the fragrance with a particular brand.
3. Non-functionality:
   • The fragrance must not serve a functional or utilitarian purpose, such as a scent that is simply part of the chemical composition of a product (e.g., the smell of a soap).
   • If the fragrance is essential to the product or its quality, it cannot be registered as a trademark. The fragrance must only serve as an identifier of the source of goods, not as a product feature.

International Precedents and Global Practices:

While Indian law does not have many clear precedents for fragrance trademarks, certain international jurisdictions have accepted fragrances as trademarks, offering insights into how the issue might be handled in India.

1. European Union:
   • The European Union Intellectual Property Office (EUIPO) has accepted fragrance marks, including the smell of a specific flower or fruit, as registrable trademarks. The EU Trademark Regulation allows the registration of non-traditional marks, including smells, if they meet the distinctiveness and non-functionality requirements.
2. United States:
   • In the U.S., fragrance trademarks have been recognized in certain cases. The United States Patent and Trademark Office (USPTO) has registered scents as trademarks under the Lanham Act, primarily in the context of consumer goods. A famous example is the "fresh cut grass" fragrance for the scent used in tennis balls, registered in the 1990s.
3. Singapore:
   • Singapore has recognized scent marks as non-traditional trademarks under the Trade Marks Act, and the Intellectual Property Office of Singapore (IPOS) has registered scent marks that satisfy the necessary criteria.

Settled Legal Positions in India:

1. Indian Jurisprudence on Non-Traditional Marks:
   • Indian courts and the Intellectual Property Appellate Board (IPAB) have recognized non-traditional marks like colour marks and sound marks. However, these cases generally involve marks that can be represented visually or aurally.
   • For instance, in the case of Cadbury India Ltd. v. Neeraj Food Products, the purple colour associated with Cadbury chocolates was upheld as a valid trademark. The courts acknowledged the distinctiveness of non-traditional marks but did not directly address the registration of scents.
2. IPAB's Stance on Non-Traditional Marks:
   • In Swaraj (Tata) Ltd. v. Tata Motors Ltd., the IPAB dealt with a case involving colour marks. The court stressed that non-traditional marks could be registered if they could be represented in a non-visual form and were capable of distinguishing the goods. While it did not directly address scent marks, it highlighted the importance of distinctiveness and public recognition.
3. **The Case of "Smell of Success" (No Registration for Fragrance Marks)
   • In one of the more famous instances, Amway India sought to register a fragrance mark for its perfume. The application was rejected primarily because the scent could not be represented graphically, thus failing to meet the requirements of Section 2(1)(zb) of the Trade Marks Act, 1999.
   • This case illustrated the current challenges in India regarding fragrance registration.

Case Study and Citation:

Cadbury India Ltd. v. Neeraj Food Products (2007)
Citation: (2007) 35 PTC 257 (Del)

• Facts: This case involved Cadbury's attempt to register its purple colour as a trademark for chocolates. The issue revolved around whether colour could be considered a valid trademark.
• Outcome: The Delhi High Court ruled in favour of Cadbury, acknowledging that colour could be a valid trademark if it met the criteria of distinctiveness. While the case did not involve fragrance, it set a precedent for non-traditional marks, providing a basis for potential future cases involving scent.

Conclusion:

• As of now, fragrance or scent marks face significant challenges under Indian trademark law primarily due to the graphical representation requirement in the Trade Marks Act, 1999. While Indian courts and legal frameworks have shown flexibility in accepting non-traditional marks like colours and sounds, the lack of clear guidelines and recognition for fragrances makes it difficult to register such marks.
• However, global precedents and the evolving landscape of intellectual property law suggest that, with the right legal developments, fragrance marks may one day be accepted in India. A fragrance could potentially be registered if it can be graphically represented (possibly through a chemical formula or other description) and demonstrates the requisite distinctiveness and non-functionality.
• In conclusion, while there is no current explicit provision in Indian law for fragrance marks, evolving jurisprudence on non-traditional marks provides hope for the future recognition of scents as valid trademarks in India.

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(The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances).