Garlic smell refused trademark protection

Russian Federation

The Russian Chamber of Patent Disputes has dismissed an appeal against a decision refusing an application to register the smell of freshly cut garlic for goods in Classes 3, 29, 30 and 32 of the Nice Classification (Application No 2011705919).

The application had been rejected on the grounds that the claimed designation is not distinctive for some of the goods in Classes 29 and 30, as it is descriptive of the properties and composition of these goods, and that it is misleading with regard to the rest of the goods.

The applicant filed an appeal against the decision. The appeal, however, was dismissed by the Russian Chamber of Patent Disputes on June 20 2013. According to the ruling issued by the appeal authorities, the appeal could not be satisfied for the following reasons.

First, during consideration of the appeal, it was held that smell is one of the properties that characterises the goods applied for. Thus, the claimed designation lacks distinctive character in relation to these goods, since the proposed mark will be perceived by consumers as an attribute of the goods, namely their smell. According to the appeal authorities, this position was confirmed by the applicant himself, in that the smell is clearly indicated on the packaging of the applicant’s product.

Second, the ruling stated that the smell of garlic is common and traditional for some of the goods in Classes 29 and 30. In contrast, for some of the other goods (eg, dairy products, fruits, coffee, tea, sugar, confectionary, ice creams, honey, treacle, as well as goods in Classes 3 and 32), the smell of garlic is not common and, therefore, is capable of misleading consumers as to the composition of the goods - especially in light of the fact that the application makes it clear that these goods do not contain any garlic and are not garlic-flavoured.

Based on the aforementioned findings, the appeal authorities came to conclusion that the claimed designation did not meet the requirements for registrability laid down in Article 1483, Sections 1 and 3 of the Russian Civil Code, as it was unable to distinguish the goods at issue. Therefore, the examiner’s decision to refuse protection to the claimed designation was well founded.

The decision shows that applications to register smell marks will face objections from the Russian Patent and Trademark Office. In particular, smell marks may be deemed to be descriptive or misleading in relation to the goods applied for.

Non-traditional marks are difficult to register in Russia. With regard to smell marks, there has only been one example of successful registration: a trademark consisting of a leather tag with a leather scent was registered under No 470375 on September 10 2012 for services in Class 41.          

Alexey Kratiuk and Tatiana Pogrebinskaya, Gorodissky & Partners, Moscow

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