Under the Federal Decree-Law No (36) of 2021 (“UAE Trademarks law”), “smells” find mention within the definition of “trademark” as provided for under the Article (2) of the said law. It is defined as “anything having a distinctive form such as names, words, signatures, letters, symbols, numbers, addresses, seals, drawings, pictures, engravings, packaging, graphic elements, shapes, colours, colour combinations, or a combination thereof, or a sign or group of signs, including three dimensional signs and holograms, or any other sign used or intended to be used to distinguish the goods or services of an establishment from goods or services of other establishments, or to indicate the performance of one of the services, or conducting monitoring or examination of goods or services. A trademark shall be considered as that of sound or smell”.

In addition, it can be granted statutory protection under trademark/s laws of few countries such as Australia, Canada, Colombia, France, Korea, New Zealand, Peru, UK, USA, etc.

Requisitions for registration

However, there are stringent requisitions required to be met to obtain registration of any such smell mark/s which are enumerated below:

1 . It should have a description and/or be graphically represented. In other words, it should be describable in words which should be clear and precise description. In a landmark case before the ECJ i.e., Ralf Sieckmann v Deutsches Patent- und Markenamt (C-273/00), a “methyl cinnamate” scent which was described as “balsamically fruity with a slight hint of cinnamon” along with its chemical formula, was refused registration on the ground;

    • that a chemical formula only stated the substance and not its odour.
    • the description was not sufficiently clear and precise.
    • that a physical deposit of a sample of the scent did not constitute a graphic representation and was not sufficiently stable or durable.

This above case clearly illustrated the hardships that a smell mark is likely to face vis-a-vis its description or graphical representation.

2 . Its functionality should not be dependent upon the purpose for which it is created. The product on which any such smell or fragrance is used or associated with should have a functionality of its own so that any such associated smell or fragrance has the capacity of being recognised on standalone basis as to its source or origins vis-à-vis the product it is associated with. For example, registration of Chanel’s trademark application for their well-known fragrance “No. 5” as a smell mark was denied registration in the United Kingdom on the ground that the scent of the perfume is the very nature and core of the product which is connected with its functionality i.e., to deliver the fragrance.

Further, it is interesting to note that there is no method to store these at the Trademarks offices of various countries as a perfume bottle sample, if kept for a long time, is likely to be spoiled or decayed. Thus, it cannot be physically kept or stored or placed on a trademark register.

Illustrative examples

Interestingly, in the year 1990, United States of America in case of ‘Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB) 1990‘, became the first country to grant registration to a “smell” mark. It was granted pursuant to an appeal before the Trademark Trial and Appeal Board (“TTAB”). In the given case an application for the “smell” mark was primarily described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms”. It was used in relation to sewing thread and embroidery yarn. However, at the first instance, USPTO refused to register it. The ground stated was that it does not identify or distinguish applicant’s goods from those of others. It was contended that the “smell” mark is “analogous to other forms of product ornamentation in that it is not the type of matter which consumers would tend to perceive as an indication of origin”. Also, that “the applicant’s alleged mark was de jure functional, assertedly because of the competitive need for free access to pleasant scents or fragrances”. However, TTAB, in an appeal before it, reversed the decision and accepted the smell mark for registration. It mainly contended that the applicant did demonstrate functionality of scent as a trademark which was being used by them in relation to their thread and embroidery yarn. Hence, it was contended that the said mark had the capacity to serve as a trademark to identify and distinguish a certain type of product in market from those of other traders’ products. Also, it was observed that the applicant was the only person who marketed such fragranced yarns and threads.

In 1996, United Kingdom became another country to grant its first “smell” mark registration. The mark consisted of a rose fragrance in respect of “tires” and it was applied by “Sumitomo Rubbers”. Subsequently, “Dunlop Tyres” acquired the said registration for use in relation to their tires. Another smell registration was of “Play-Doh” in the name of Hasbro Inc., which is widely talked of. This “smell” registration was described as “unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough”. Since this unique fragrance was in use since 1955, the application for it also included a claim of its acquired distinctiveness.

In a nutshell

UAE Trademarks law has widened the definition of “trademarks” to include smell marks within its fold though it is yet to grant registration to any such unconventional mark. Although we have seen that there are some smell marks which have been accorded registrations in other jurisdictions, the requisitions to attain its registration under any trademarks law are hard to meet. The foremost requisition for attaining such a registration is the ability to describe smell as accurately as one can bringing out the real fragrance/s involved. Further, there should not exist any connection between the product bearing a smell and its functionality per se. In other words, the functionality of the scents or smells is to deliver a fragrance which becomes associated with a certain non-related product and which in turn becomes such product’s source or origin indicator. Hence, to be accorded registration, the smell mark and the product it is associated with should be different in its nature and functionality. Furthermore, the storage of smells, perfumes, or fragrances at the Registry(ies) is another issue to be dealt with as these tend to get spoiled or decayed over a long period of time. In any eventuality, there is still an issue as to the acceptability of such an unconventional trademark in many jurisdictions across the world. Only few jurisdictions grant statutory protection to such unconventional marks which, in any case, is difficult to register.

About the blogpost author:

Rajiv has an extensive legal experience of 29 years working in multiple jurisdictions in India and the UAE. He is an expert at handling both contentious and non-contentious legal issues involving IP, Corporate and Commercial laws, Contracts, Media laws, & IT. He has attended several international conferences and been a speaker at international and national events including webinars. Rajiv has been assessed as a ranked lawyer by few of the reputed international legal publications including World Trademark Review – which has ranked him for a continuous period of time for the years 2020 to 2022 in India and 2023 & 2024 for UAE. Rajiv obtained degrees in Science and Law from Delhi University, India. He is a member of the Bar Council of Delhi, India, Ex-member of 2 INTA Committees and an authorised legal consultant sworn by Government of Dubai Legal Affairs Department in UAE. Rajiv is fluent in English and Hindi.