Taste and smell signs – is it possible to register them?

Trademarks do not have to be just words or graphics (logos). They can be sound, colour and even… smell or taste! Although registering them is difficult, for years there have been attempts to demonstrate how creatively entrepreneurs can act to protect their products.

A trademark within the meaning of the Act on Industrial Property Law may be any sign, provided that such a sign is capable of distinguishing the goods of one undertaking from those of other undertakings. It must also be possible to present it in a trademark register in a way that allows to determine an unambiguous and accurate subject of granted protection – Article 120 of the IPR. However, both the above-mentioned Act and EU regulations do not close the catalogue of types of signs that can be registered as trademarks. Therefore, if the entrepreneur intends to register his sign, but has a problem with its classification, he may apply for a protection right for the so-called unconventional mark.

Not only word and logo – the world of unconventional signs

An unconventional sign does not have a verbal, graphic or word-graphic form, as the signs most often registered in the Polish Patent Office. Protected, albeit less frequently, are also sound signs, patterns, position signs, spatial signs, multimedia signs, holographic signs or colours:

R.271601 – registration in class 38 for mobile telephony services to Orange Brand Services Limited

All other signs are so-called other trademarks, such as taste or smell marks.

Sieckmann’s rules – how to capture the smell on paper

In 2017 in the EU and in 2019 in Poland, the requirement to present the trademark in a graphic form, in accordance with the Directive of the European Parliament and of the Council of the EU, was replaced by the requirement to present it in a manner consistent with the so-called Sieckmann’s seven principles. According to them, the sign should be clear, precise, complete, easily accessible, understandable, objective and durable and unambiguous.

In the case of Ralph Sieckmann, German patent attorney, pending before the Court of Justice of the European Union in 2002. (C-273/00 [2002] ECR I-11737 Ralf Sieckmann v. Deutsches Patent und Markenamt), the applicant tried to register an olfactory trademark: “balsamic fruit fragrance with delicate notes of cinnamon” for several service categories such as catering, advertising, agricultural services. The fragrance was described as methyl cinnamate and a sample of the fragrance and its chemical formula were attached to the documentation.

This ruling established that trademarks can take various forms, but they must be presented in such a way that they can be graphically reflected, and this presentation must be stable and durable. The documentation presented in this case turned out to be insufficient for the CJEU.

Why registering fragrances is such a difficult nut to crack

In the case of signs such as taste and smell, compliance with Sieckmann’s conditions seems extremely difficult due to the lack of appropriate technical means for presenting such indications. Although tastes and smells do fulfil a distinguishing function — allowing products to be identified and differentiated — they ultimately evoke unique associations and memories in each of us. Therefore, even a detailed description makes them extremely difficult to convey. However, as there is no ban on their registration, both in Poland and in the world such attempts are made.

Fragrance signs in the world — from idea to registration

Fragrance signs are signs that we recognize by smell. Theoretically, you can try to represent them with a chemical formula or an odour sample, as was the case in Sieckmann’s case, but the sample is not considered persistent because each odour oxidises over time, and the chemical formula is not really about the odour itself, but about the substance that creates it. It is also worth mentioning that a product that emits a smell cannot be considered a trademark, it is necessary to demonstrate independence from the goods.

For this reason, the right to the Community trademark “smell of ripe strawberry” was refused Case T-305/04: Eden v. Office for Harmonization in the Internal Market, in which a drawing showing a red strawberry was attached to the application. On the other hand, the Polish Patent Office discontinued the proceedings against application Z.220307 from 2000 – “the smell of lily of the valley”.

“Freshly mowed grass” — when nature becomes a sign

So far, only one EU scent mark has been registered. This was done by a Dutch company producing tennis balls by recording the “smell of freshly cut grass”. The Office stated that the smell of freshly cut grass is a smell known to everyone, and thus recognizable on a global scale. For this reason, its description alone was considered sufficient. However, the registration expired after 10 years as a result of the non-renewal of protection.

Graphic representation of EUTM 000428870:

“The strong smell of beer” — ailerons in British pubs

In the United Kingdom, Unicorn Products Ltd. managed to register, among others, the “strong smell of beer” for the UK 000020000234 aileron feathers. The company planned to launch new dart pens for the popular dart game, which were supposed to emit the smell of beer during the flight, creating an atmosphere typical of British pubs. The fragrance was to be released thanks to capsules built into the feathers that would crack when in contact with the surface.

Fragrances in the USA — coconuts, flowers and aromatic successes

On the American market, there are more scent marks, the first of them comes from 1990 and it is the scent of a plumage flower for embroidery threads. The Flip Flop shops chain, which sells flip flops that spray coconut aroma in its stores, also boasts a successful registration. In this case, the fragrance contributed to the increase in brand recognition.

Flavour signs — the bittersweet reality of registration

Taste trademarks are signs received thanks to the sense of taste. As in the case of olfactory trademarks, their successful registration seems impossible, as determining the subject of protection in a clear and precise way, using the available technology, is a real challenge. It must be borne in mind that a mere description of such a sign, regardless of its level of detail, is not, according to the case-law, sufficient to meet all the Sieckmann criteria. It is necessary to present it in such a way that it will be clearly identified. In addition, it should be proved that the taste distinguishes a given good or service on the market (distinctive ability of the sign). This is difficult because the taste is perceived in the context of the product element and not per se. The taste is also subject to subjective assessment, as is the smell, which makes it difficult for the general consumer to compare the products.

Secret recipes — taste protected as a company secret

A well-known example of a failed EU registration of flavour as a trademark is the flavour of oranges for antidepressants EUTM 003065539. So far, no attempt to register this type of designation has been successful on a global scale. It is worthwhile to note that in the face of such a difficult registration, some companies decide to protect specific flavours as a business secret. Secrets may be covered by recipes, i.e. recipes for their production. The most famous and closely guarded recipe of this type since the end of the 19th century is the composition of Coca Cola, created by pharmacist John Pemberton. Interestingly, Coca-Cola was originally sold as a painkiller.

Summary and practical tips for entrepreneurs

The Sieckmann case paved the way both in our home market and around the world for attempts to register signs considered unconventional, elusive to the sense of sight. Unfortunately, the EU Court did not indicate the specific requirements that the description of the sign should meet in order to pass the “Sieckmann test”. Therefore, the owners of the signs are groping in this aspect, trying to present their sign as originally as possible, hoping for a successful resolution of the case.

It is worth remembering that due to the niche of taste and smell trademarks and numerous failures in their attempts to register, it is better to use the help of a patent attorney, who, due to a wider view on this subject, could support the entrepreneur in making such an attempt.