Laboratoires France Parfum had applied for a community trade
mark in 1999 – sending a picture of a strawberry with its
application, given the need for trade marks to be represented
graphically. Its plan was to use the smell in soaps, face cream,
stationery, leather goods and clothing.
The application for what is classed as an "olfactory sign" in
the trade marking lexicon failed on the grounds that the mark could
not be represented graphically and was devoid of any distinctive
character.
Laboratoires France Parfum appealed to the Board of Appeal of
the Office for Harmonisation in the Internal Market (OHIM) without
success.
In the meantime, the perfume company was taken over by
Paris-based Eden SARL. It took the case to the European Court of
First Instance, arguing that the description and image together
were sufficient to “graphically represent” the mark.
The Court of First Instance disagreed.
Court turns its nose up
The Court accepted that a trade mark might consist of a sign
that is “not in itself capable of being perceived visually,
provided that it can be represented graphically, particularly by
means of images, lines or characters”. But it stressed that the
representation must nevertheless enable the sign to be precisely
identified.
The Court did not rule out the possibility of an olfactory sign
being the subject of a description that met all the requirements,
but found that it did not do so in this case.
A study submitted to the Court showed that different types of
strawberries produced different smells, with the result that the
description “smell of ripe strawberries” could mean one of several
different smells.
The Court added, “there is no generally accepted international
classification of smells which would make it possible, as with
international colour codes or musical notation, to identify an
olfactory sign objectively and precisely through the attribution of
a name or a precise code specific to each smell.”
The written description was therefore not precise enough.
Turning to the strawberry image, the Court was unimpressed. It
decided that the image represented only the fruit producing the
smell for which the trade mark was claimed, and not the smell
itself. Therefore, it could not amount to a graphic representation
of the mark.
Smells of success
The UK's first olfactory trade mark was granted to Japan's
Sumitomo Rubber Co. in 1996 for "a floral fragrance / smell
reminiscent of roses as applied to tyres”. The mark was later
transferred to Dunlop Tyres.
The same year, Unicorn Products, a London-based maker of sports
equipment, registered a UK trade mark for "the strong smell of
bitter beer applied to flights for darts."
In 1999, the first Community Mark for a smell was granted to
Vennootschap onder Firma Senta Aromatic Marketing of Holland. It
registered "the smell of cut grass" for tennis balls.
However, trade mark applications for smells rarely succeed.
Chanel failed to register the smell of Chanel No 5; and
furniture-maker John Lewis of Hungerford plc failed to register the
smell of cinnamon applied to furniture.
