The Smell Of Trade Marks

"Balsamically fruity with a slight hint of cinnamon" - does that smell familiar?

Is what you smell the same as what I smell? Is it distinctive and clearly identifiable? And will it smell the same next week?

These questions among others have escalated up to the European Court of Justice (ECJ) in a recent trademark case.

A trademark is a badge of origin. The ECJ recently re-iterated that the essential function of a trademark is to guarantee the identity of the marked product or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others, which have another origin.

Words make up the vast majority of trademarks. For example, the title of your daily newspaper identifies its origin. Logos make another important set of trademarks, with the Shell Logo identifying the goods and services of an Anglo-Dutch oil company. More unusual trademarks exist, the shape of a Coca-Cola bottle and the musical ditty associated with the Direct Line Insurance advertisement. However, can a smell ever act as a trademark?

The European Trade Mark Directive states that a trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs can distinguish the goods and services of one undertaking from those of others. The list of what constitutes a trademark is non-exhaustive. The possibility is held out that anything can act as a trademark and be registered as such. A recent ECJ case considered the question of whether a smell can act as a trademark and be registered as such.

Last December, the ECJ upheld the decision of a German national court to refuse the registration of a trademark which consisted of a smell, as used in relation to the sale of advertising services amongst other services, which in words was described as "balsamically fruity with a slight hint of cinnamon". The Applicant not only described the trademark in words, but also provided the chemical formula of the underlining composition of the smell, derived from methyl cinnamate. The Applicant also volunteered to provide a sample of the smell in a sealed container to be deposited at the German Trade Mark Office and to be held on file, so that people could "sniff" the trade mark.

The ECJ found that the definition of a trademark in the Directive is not exhaustive, and although it does...