Non-Conventional Trademarks – Part 2 – Trademarks that stimulate the senses

Trademark protection is invaluable within corporate intellectual property protection. First, there is a strong patrimonial value associated with trademark protection. Second, a trademark is the consumer’s point of reference within a vast and rapidly growing innovative and competitive world. A trademark offers recognizability and creates trust. It ensures that a consumer knowingly chooses a product or service from one company over the other. The investment in trademarks is therefore inextricably linked to the economic success of companies.

Despite the great significance of trademarks in the market, there still exist important gaps in EU trademark practice. Such gaps have a negative effect on the legal certainty of companies wishing to obtain trademark protection and optimally secure their business activities. Following the entry into force of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR), the requirement of a graphical representation of trademarks was abandoned. This has since opened the door for companies to register certain non-conventional trademarks such as sound and motion marks, a welcome change in a world that has become more digitalized. Nevertheless, companies still face difficulties when trying to register non-conventional trademarks. This is particularly true for trademarks that stimulate the senses, more specifically smell (“olfactory”), taste (“gustatory”) and feel (“tactile”) marks.

Do smell, taste and feel marks make sense?

The market is evolving at a high pace and marketing strategies are becoming more advanced. Companies are well aware of the fact that appealing to the senses of consumers will increase the chances of their products being purchased. Marketeers have since long tried to persuade consumers by creating strong visuals or recognizable sounds. However, more and more other senses are being targeted as well.

In this new marketing reality companies should not neglect to consider the legal conditions (or restrictions) for trademark protection. This entails that the following conditions must be fulfilled:

1. the object of protection concerns a “sign”;
2. this sign must be capable of distinguishing the goods or services of one company from those of other companies;
3. the sign should be representable in the trademark register in a clear and precise manner.

Since the limits of the graphical representation of trademarks have been repealed, every sign is now in theory subject to trademark protection. In order to be protected as a trademark, a sign should provide clear information about the origins of a specific product or service. In this context, it is not unreasonable to note that human senses, such as smells, tastes or the sense of touch, can be used to identify the origin of a product or a service. The fact that companies are searching for new ways to try to stimulate these senses in order to attract consumers clearly illustrates this.

Moreover, as consumers become more accustomed with “sense stimulating” marketing techniques, it is likely that they will increasingly link specific smells, tastes or even feels to the goods or services from one company and distinguish those goods or services from those of other companies.

The foregoing supports that smell, taste and feel marks are capable of distinguishing the goods or services from different companies, meaning that these type of marks also possess a distinctive character. In this regard, one can raise whether smell, taste or feel marks are inherently distinctive or rather that they can only acquire distinctiveness through continued use in the market. In any event, as is the case with other trademarks, the assessment of distinctiveness will be done on a case-by-case basis.

Representation of sense stimulating trademarks – No registration possible

Even though now, in theory, all types of signs can be the subject of trademark protection, there are still legal complications regarding smell, taste and feel marks as today, it still does not appear to be possible to register these types of trademarks in the EU. This follows from the fact that generally available technology does not allow companies to represent the relevant object of trademark protection (smells, tastes or the sense of touch) in the trademark register in a clear and precise manner, which, as mentioned, is an important prerequisite for trademark protection. For example EU legislation prohibits the use of samples to represent smells or materials that can be used for feel marks (Article 3(9) EUTMIR).

This issue of the representation of smell marks has previously been the subject of debate in the case law of the Court of Justice of the European Union. For example in the Sieckmann case the Court ruled that the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odor sample or by a combination of those elements. Despite the dropping of the requirement of a graphical representation of signs, this decision, requiring that the representation of a sign needs to be clear, precise, self-contained, easily accessible, intelligible, durable and objective, still holds great significance. Given today’s technology, these requirements are a significant stumbling block for the protection of smell marks (but also taste and feel marks).

In another important case concerning the representation of smell marks, i.e. the Odeur de fraise mûre case, the Court found that the combination of the image of a strawberry and the description “smell of ripe strawberries” does not constitute a valid graphical representation of this sign consisting of the smell of ripe strawberries. Quite interesting is that the Court stressed the importance of smells from a marketing perspective by noting that the olfactory memory is probably the most reliable memory that humans possess and that, consequently, economic operators have a clear interest in using smell signs to identify their goods. Notwithstanding the fact that the Court acknowledges the importance of smells for consumers, the Court’s ruling still prevents companies from actively seeking trademark protection for this type of marks.

With regard to tastes, the Court in its decision Levoloa Hengelo vs. Smilde Foods has held that the taste of a food product cannot be pinned down with precision and objectivity. Moreover, the Court ruled that it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind. Although related to a copyright dispute, this ruling by the Court clearly eliminates the possibility for companies to register taste marks on an EU level, at least for now.

What about the rest of the world?

Outside of the European Union, there is no uniformity on the protection of smell, taste and feel marks. The registrability depends on the jurisdiction where protection is sought. A wide variety of different rules and situations unfortunately have a negative effect on the legal certainty of companies.

On the one hand, there is a wide range of countries where non-traditional trademarks as a whole or smell, taste and/or feel marks specifically are simply not allowed. Countries like China, Brazil or the Philippines do not allow the registration of smell, taste and feel marks (one of the reasons cited is that trademark protection should be strictly limited to “visible signs”).

On the other hand and similar to the situation in the EU, some Asian and Latin American countries allow the registration of smell, taste and feel marks in theory, but there are no successful examples in practice to date. This can probably be explained by the fact that in the majority of cases smell, taste and feel marks are not considered to be inherently distinctive, but rather that these marks can only be registered once companies can prove that their marks have acquired distinctiveness through continued use in the market. Australia and New-Zealand also accept the possibility to register smell, taste and feel marks, but only in Australia did a company succeed in obtaining a smell mark registration for golf tees that smell like eucalyptus.

A minority of countries have accepted the registration of smell or feel marks as long as these marks are represented in a clear and precise manner. In contrast to the EU, Mexico, for example, does allow the use of samples. Other countries have settled for the use of a verbal description, chemical formulas and even press releases!

The United States takes the lead when it comes to known examples of smell mark registrations, but even there the number of examples is very limited. Two examples include a registration for the bubble gum scent for sandals and strawberry toothbrushes. The US also has registrations for feel marks, for example  a mark which consists of a leather texture wrapping around the middle of a bottle of wine.

At this moment, no country has accepted the registration of taste marks.

In order to increase the legal certainty of companies, more global uniformity in the protection of sense stimulating trademarks is vital. International organisations, such as INTA’s Non-Traditional Marks Committee (NTMC), therefore continue to advocate for the harmonization and improvement of international legislation that covers the protection of non-conventional trademarks.

Conclusion

Non-conventional trademarks will continue to play a huge role for companies that are constantly looking for new ways to stand out from the crowd. It is therefore important for companies to have a clear and coherent way of securing trademark protection.

Although the changes in EU legislation leave more room for companies in terms of developing new types of non-conventional trademarks, the legal uncertainty regarding smell, taste and feel marks clearly illustrates that the European trademark system still has to hop on the innovation buss. This will necessarily have to go hand in hand with the further technological development of our society. The rise of new non-conventional trademarks is inevitable and countries will need to find new ways to allow the registration of sense stimulating trademarks in practice.

One might also wonder if there really are not enough words in our dictionaries to describe these senses in a clear and precise matter or is the threshold set so high on purpose to keep these types of marks, although theoretically allowed, out of the world of EU trademarks in practice?

In case you should wish to receive more information or advice on “non-conventional” as well as “conventional” trademarks, feel free to contact us at trademarks@gevers.eu. The GEVERS website can be accessed at www.gevers.eu.