Can I trade mark a smell?

Under UK law, trade marks in the form of a scent or smell can be regarded as non-traditional, alongside colours, sounds or tastes. This differs to traditional a trade mark, including a name, logo or slogan, which must satisfy the element of distinctiveness. As per the Sieckmann criteria (Ralf Sieckmann v Deutsches Patent-und Markenamt [2002]), a trade mark must hold sufficient grounds of being ‘clear’ and ‘precise’. Prior to its alteration in January 2019, a further three elements of durability, accessibility and objectivity were also required, alongside the component of graphical representation.

The trade mark application for a smell in the Sieckmann case was rejected, as a sample was deemed not durable, a chemical formula was not accessible and a mere description of the smell was not clear nor precise, thus not satisfying the necessary requirements, at the time. However, now the only features which must be proved are those of clear and precise. This is also known as the registrability test and may come across as ambiguous. With less words to provide for a criteria, the meaning could be strengthened as there is more emphasis on those words alone, however, it could be weakened, as there are less elements to satisfy.

As per the Government’s manual on trade marks, smell marks are capable of registration, however achieving an acceptable representation format appears difficult. Therefore, as per Sieckmann, any representation in the form of chemical formula, description of the scent, a sample or a combination of all doesn’t satisfy the element of representation .Thus, under section 3(1)(a) of the Trade Marks Act 1994 (TMA),  it appears unlikely for a smell mark to be acceptable. Furthermore, as per section 3(1)(b) TMA, it is also highly unlikely for a trade mark to be accepted due to distinctive character, as a consumer would not be likely to associate a smell with a particular trade mark origin.

If you have any questions regarding the above, or any other matter,  please do not hesitate to get in touch with the Lawdit team today.

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