Court rules for the first time that smells are registrable as trademarks

An Argentine first instance court has for the first time ruled that olfactory trademarks may be registered in Argentina (Case 7249/01, June 17 2004). The decision is final and has not been appealed.

French cosmetics company L'Oréal filed various applications to register fruit smells as trademarks for L'Oréal Kids shampoo containers. Antiall SA, a local producer of hair products, opposed the applications on the grounds that the olfactory marks were not sufficiently distinctive. L'Oréal filed a court action against Antiall for opposing its application without justification. As Antiall failed to respond to L'Oréal's action, the lawsuit was heard in contempt of court.

Upon entering judgment, Justice Marcelo Wathelet considered that the court had to review the case, even though Antiall's failure to respond implied an acknowledgment that its opposition action was unjustified.

Wathelet referred to the opinions of several Argentine legal scholars and compared them to the rationale of the decision of the Office for Harmonization in the Internal Market's Board of Appeal regarding an application for the registration as a Community trademark of the smell of fresh cut grass for tennis balls in Class 28 of the Nice Classification. Wathelet considered that these opinions were relevant to the matter at issue, based on the broad scope of Article 1 of the Argentine Trademark Law, which (i) determines what may be registered as a trademark, and (ii) authorizes the registration of all signs provided that they are distinctive.

Wathelet found that there are no impairments to the registration of olfactory trademarks in Argentine law. However, he stated that such marks need to be described in detail, which would normally require an applicant to specify the chemical components of the fragrance. He concluded that effective protection of olfactory trademarks can only be achieved once the Trademark Office has determined the necessary steps for accurately describing such marks.

Fernando Noetinger, Noetinger & Armando, Buenos Aires