Can I trademark smells? Can a shape be trademarked? This is recurrent question we get asked as our clients are mostly in the creative industries.
A trademark sign must be capable of being represented graphically. This means that it must be in some kind of physical form. But contemporary culture has evolved so that purely physical representation alone cannot always capture the distinction between goods and services. Sounds, and colours have also been accepted as being capable of graphic representation even though sound, for example, lacks physical form. Even tastes and personal names can now be registered as trade marks. In other words, an application for a trademark sign can be supported with evidence to prove that the mark is clearly distinctive of the origin of a good or service therefore making it capable of graphic representation. So an application for a sound can be supported with a verbal description and a musical score.
So trademark smells? The answer is that shapes and smell are currently not capable of a trademark under UK and European law. Shapes are protected as designs.
Case: vennootschhap Onder Firma Senta/The smell of freshly cut grass, R156/1998-2  ETMR 429
In the above case the Office of Harmonisation of the Internal Market (OHIM), who administer European Community wide trademark law, stated that you could support an application for a trademark with verbal evidence to prove that a smell did clearly distinguish a good or service. In other words a smell was capable of being trademarked within the European Community.
Nevertheless, in the case of Ralf Sieckman , Mr Sieckmann applied to register the smell of cinnamon as a trade mark in Germany. He provided a verbal description, sample, and a chemical formula. The ECJ indicated that these additional evidence were not enough to support an application to register a smell as being “sufficiently precise” to make it capable of being a graphic representation to satisfy European trade mark law for the registration of trade marks (the UK is subject to European trade mark law). The evidence provided was not capable of identifying the origin of underlying goods or services with enough particularity.
In other words, the European Court of Justice, indicated that a smell was not on the menu of marks that were capable of graphic representation. The central issue was “sufficiently precise”. Whatever additional evidence used to support an application for a smell had to be “sufficiently precise”. This obviously does not exclude completely the possibility of a smell being accepted as capable of graphic representation but it does not include it either because it sets a very high bar for an applicant trying to demonstrate graphic representation.
The ECJ essentially indicated that perhaps one day in the future as technology and culture evolves someone will find a way of making smells capable of graphic representation but until then, don’t hold your breath. For more information on UK trademark law refer to the Trade Mark Act 1994 – UK Trade Mark Law.
To book a face to face consultation for legal advice about how to best protect your logo, brand name or designs, contact a specialist intellectual property lawyer (charge rates may apply and may vary).