Protecting Distinctive Scents

While some clients may joke that an attorney is motivated simply by the smell of money, smells are no joking matter for some innovative businesses, they mean money. As decided by the Trademark Trial and Appeal Board, in a landmark decision, Distinctive fragrances are eligible for federal trademark registration. The
Trademark Trial and Appeal Board, has ruled that there was no reason why a fragrance was not capable of identifying and distinguishing certain types of products. In fact some products are readily identifiable by their scents. Thus, the Board allowed registration of an arbitrary, nonfunctional scent for sewing thread and embroidery yarn and for a nonfunctional scent in certain types of oil.

The Lanham Act

The Lanham Act definition of ”trademark” encompasses fragrances by not excluding them. The term ”includes any word, name, symbol or device, or any combination thereof” which identifies and distinguishes the goods or services of one person from those of another and indicates their source. A fragrance could be considered a ”symbol” or ”device” under the Lanham Act. The statutory language has been bent in the past to accommodate new subject matter, such as sound marks and color marks. The Trademark Review Commission recommended that ”symbol” and ”device” should not be eliminated or narrowed in any revision of the Lanham Act as that could preclude registration of colors, shapes, smells, sounds, or configurations. Thus, there is no statutory reason and no apparent public policy that would prohibit registering and protecting fragrance trademarks.

Problems with Scent Marks

Marks consisting of scents are some of the most problematic. In addition to the practical difficulties of describing such marks sufficiently to determine where conflicts may exist, there is little legislation or jurisprudence on the subject. A scent mark was first recognized in 1990 in the United States, when a scent, described as a high impact, fresh, floral fragrance reminiscent of plumeria blossoms, applied to sewing thread, was deemed a registrable trademark.

Fragrance Protection in the International Marketplace
The international marketplace has not been as welcoming. Neither the General Agreement on Tariffs and Trade (GATT), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the EU Directive nor the Community Trademark Regulation address protection for scent marks. The new United Kingdom Trade Marks Act neither provides for nor prohibits protection for scent marks. Similarly, registration of fragrance marks in France and Germany is not expressly excluded, although such marks require graphical representation. There also appear to be no judicial decisions concerning the protection of such marks under other theories such as unfair competition. The new Australian Trade Marks Act expressly provides that a scent may constitute a “sign.” In Mexico, scent marks are unregisterable but it may be possible to protect distinctive scent marks under a theory of unfair competition. Although the South Korean Trademark Act does not provide for the registration of scent marks, the Unfair Competition Prevention Act may protect scent marks, as with color and sound marks. The door is firmly closed in most other countries, such as Brazil, Japan, China, and Taiwan, where scent marks are not registrable and the courts do not appear to have considered the protection of unregistered scent marks under other legal theories.