Smell/Olfactory Marks: What Are They and How To Register?

After trademarking motions and sounds, it is now time for scents or smell marks to get a unique trademark of their own. YES!

While it sounds amazing to trademark a unique smell, the process is much more complicated. Let us see what olfactory marks are, why they are beneficial, and how to register them.

Let us start right away.

What is an olfactory mark?

An olfactory or smell mark is the unique scent capable of identifying a product. Here, the phrase “Scent Mark” refers to a source identifier for items that are a smell. Smell Marks are more difficult to record than sound marks since they lack any kind of representation.

Can a smell mark be trademarked?

YES, a smell mark can be trademarked but only in a few countries. But, as compared to other unconventional trademarks (sound and motion marks), smell trademarks are still at a nascent stage. This is why there is very little information available for registering small marks. Moreover, as the registration process for scent marks is quite tough, there are only a few smell marks registered so far.

Countries That Allow Smell Marks Registration

United States of America (USA)
United Kingdom (UK)
European Union (EU)
Canada
South Korea
Australia
New Zealand

Countries That Don’t Allow Smell Marks Yet

India
China
Mexico
Japan

Various Countries And Their Smell Marks

Yes, the number of smell marks registered in various countries are countable on fingers. Here is a table showing various countries, the number of scent marks, and their names.

Country Name	Trademark Registration Authority	Number of Registered Scent Marks	Name of Registered Scent Marks
Australia	IP Australia	1	Eucalyptus-scented golf tee (1990)
United Kingdom	Intellectual property office	2	Dart feathers with a fragrance like bitter beer (1994) A floral smell of roses as applied to tyres used for road vehicles (1994)
USA	United States Patent & Trademarks Office	10	Flowery musk scent (Verizon stores) Bubble gum scent for sandals Piña colada scent to coat ukuleles. The coconut smell that fills flip flop stores. Rose-scented marketing products (to an individual, not a company) Minty” pain-relief patches. Strawberry toothbrushes. Strawberry, cherry, and grape lubricants for combustion engines.

Basic Requirements For Smell Marks in the USA

The applicant/attorney needs to prove that a scent has no practical use other than to aid in identifying and differentiating a brand. This indicates that a product meant to provide fragrance (cologne or car freshener) cannot get a registered smell mark.

Therefore, we have 2 basic criteria, functionality and distinctiveness

Functionality

USPTO considers a product’s characteristic functional only if it is required for the items’ usage and impacts its quality. Further, even if the applicant proves its secondary meaning, a product’s characteristic feature is not registerable as a trademark if it is practical in nature.

The main purpose behind the non-functionality test is to limit competition. As a result, it is registerable if someone proves that the particular smell is a key identifier for the product and has no practical function.

The distinctiveness of the Product

Proof of acquired distinctiveness is necessary for successfully registering a smell mark with Principal Register. Also, demonstrating the acquired uniqueness of a smell mark needs a large quantity of evidence. Moreover, if someone fails to prove the uniqueness of the particular smell, it can only be registered on the Supplementary Register but not on Principal Register.

The reapplication for moving the smell mark to Principal Register can only be made after it has been on Supplementary Register for a period of 5 years.

Famous Smell Marks Cases in the USA

Re Clarke Case

The USPTO rejected the application for granting a smell mark for scented embroidery yarn. The ground for rejection was the lack of association between the smell and the origin of yarns. Later, the applicant appealed to the Trademark Trial Appeal Board (TTAB) and won the case. At the end, TTAB stipulated that the smell (that the brand equates with (Plumeria blossoms) is distinct and capable of differentiating the products from others in the market.

Qualitex Co. v Jacobson Prods. Co.

Supreme Court opined that the scent marks could be fastened directly to the goods just like the Plumeria Blossom-scented yarn in Re Clarke Case and even applied as a scratch-and-sniff or scented card. As a result, it is possible to conclude that scent marks are eligible for trademark registration in the United States. Moreover, it is lawful to register scent marks in the USA due to the combined effect of judicial rulings and legislative restrictions.

To conclude, non-traditional trademarks may be a significant addition to any intellectual property portfolio, despite their unique obstacles. Also, brands may safeguard this distinctive part of their business if the aroma does not serve a specified function. Additionally, smart advertising aids in developing secondary meaning and can prepare the way for registration over time.

Why Is It Tough to Register Scent Marks?

As per the rules and jurisdictions so far, one cannot trademark a scent that arises purely due to the product’s nature. One such smell trademark example would be Chanel’s application to register its quite famous No. 5 fragrance in the UK. But the Intellectual Property Office of the UK rejected the application even when the smell formed the core essence of the perfume.

On the other hand, some smell mark descriptions, such as a Dutch company’s tennis balls with the scent of freshly mown grass, and UK registrations for tyres with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer,” were found to be unique enough to get the trademark.

Are Scents Patented?

Just the composition of its elements, not the smell. For protecting the smell, you need to trademark it.

Patent protection is only available for a newly discovered technology/technique/matter composition/working mechanism. Because perfumes fulfil none of these conditions, they are not patentable in any country.

Here are key points about how can you protect perfumes as intellectual property.

One can patent a unique perfume composition under Class 512 of the patent categorization system.
If you don’t want to disclose the composition to a patent, you can also get the patent protection for a perfume bottle, and this is possible under the design patent category.
If the perfume bottle is something that has never been seen before in the market and its smell is also wholly unique and fresh, you can also trademark them.

Want Your Own Smell Mark? TMReady Can Help

Whether you want your own smell mark or any other type of trademark in USA, UK, EU, Australia, New Zealand, and even Canada, TMReady is here to provide the best quality trademark services for your brand’s mark registration. Our plethora of trademark services are available across all these countries at one of the most affordable prices.

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