Registrability of smells as trademarks in serious doubt

In Sieckmann v Deutsches Patent- und Markenamt, the European Court of Justice (ECJ) has ruled that the current common methods used to identify olfactory marks do not satisfy the Community Trademark Directive's requirement for graphic representation. This decision calls into question the validity of a number of olfactory marks already accepted for registration by the Office for Harmonization in the Internal Market (OHIM) using forms of description now rejected by the ECJ.

Ralf Sieckmann applied to the German PTO to register a scent described as "balsamically fruity with a slight hint of cinnamon" for various services (including legal services). The application also included a description of the chemical structure of the scent, the actual chemical formula and a sample in a container - all standard means used to describe olfactory marks. The PTO rejected the application on the basis that it lacked distinctiveness.

On appeal, the German court held that a smell can be registered as a mark as long as the odour is capable of distinguishing the services and is not purely descriptive of the services' characteristics. However, the court found that there were doubts as to whether an olfactory mark could satisfy the Community Trademark Directive's requirement for graphic representation and thus, referred the question to the ECJ.

The ECJ held that non-visual trademarks can be registered provided that (i) they can be represented graphically, and (ii) the representation is "clear, precise, self-contained, easily accessible, intelligible, durable and objective". The ECJ found that these requirements were not satisfied by any of the descriptive elements presented by Sieckmann, either individually or in combination. The court reasoned that:

• The chemical formula in itself could not describe the odour;
  
  
• The description in words, although graphic, was not sufficiently clear, precise and objective to avoid different interpretations in the future; and
  
  
• The sample (i) did not constitute a graphic representation, and (ii) could not leave a lasting olfactory impression because of the instability of the compounds.

The OHIM's more generous approach to the registration of smells as Community trademarks (which include the smell of fresh cut grass for tennis balls) will now have to be reconsidered. Any current application for national and Community olfactory trademarks is likely to be in difficulties as it is hard to imagine what method could be used to represent such marks given the current state of technology. It will also be interesting to see if sounds fair any better than smells.

Matthew Harris and Rachel Montagnon, Herbert Smith, London