21.7. Scent trade marks

Scent is one of the most difficult non-traditional signs to represent graphically.  Under the right circumstances, it is possible for a scent to serve the purpose of a trade mark by identifying the goods or services of one particular proprietor.

7.1  Presentations and descriptions of scent trade marks

• The application must include a graphical representation of the scent mark.  This could be by way of a verbal description of the scent such as "the scent of pine".

• However one of the problems with attempting to describe a scent is that unlike shapes, colours, sounds or words, it is hard to represent a scent in a way which unambiguously clarifies its nature as it can’t be seen or heard. In terms of identity, the more that is left to the imagination, the less clarity there is when it comes to available forms of graphic representation.

• The graphical representation must be in a form that conveys information to the ordinary person allowing them to identify the trade mark.  Highly technical data will not be acceptable as a graphical representation.  For example, the results of analytical techniques such as infrared spectroscopy; vacuum, fractional and molecular distillation; nuclear magnetic resonance; vacuum fractionation; "electronic nose" analysis and chromatographic techniques would not be acceptable.

• An actual sample of the scent is not required at filing but may be needed during the course of examination.

• The applicant must include a precise and accurate description of the scent that will be entered as an endorsement of the application.  The description must include both what the scent is, and how it is to be used in respect of the goods or services claimed.
  
  Examples of acceptable descriptions are as follows:

The trade mark is a scent mark.  It consists of the smell of roses applied to plastic storage boxes for domestic purposes.

The application is a scent mark, consisting of the smell of apple blossoms applied to car tyres.

The mark comprises the strong smell of bitter beer applied to the flights of darts.

Part 10 Details of Formality Requirements - 3.4 Representation of the trade mark - scent trade marks ​​​​​​​

7.2  Registrability of scents as trade marks

Relying on an olfactory sense, rather than on the visual or auditory, to identify a proprietor is perhaps a new concept, but the question of the capability of a scent to distinguish an applicant's goods and/or services should be decided on the same general criteria as is any other kind of trade mark.  That is, on the basis of whether other traders would want or need to use it in the ordinary course of their business, without improper motive.

7.2.1  Scents not adapted to distinguish

Natural scent of a product

The natural scent of a product will have no inherent adaptation to distinguish the goods.  Into this category come goods such as perfumes and eau de colognes for personal use; essential oils for perfumery or cooking; the scent of cedar for timber products and herbal scents/essences for culinary use.  These scents either form the goods themselves or are a natural attribute of the goods.  The scent thus refers to the goods, and not to the trade source.  Other examples of this type are the scents of chocolate or vanilla for bakery goods (commonly used ingredients), or the smell of rubber for car tyres.

Masking scents

In addition to the natural or inherent scents of goods, many producers use scents to mask unpleasant natural odours in the goods they sell.  A masking scent has a functional purpose, and is not capable of distinguishing for that reason.  Examples of this type of scent could be the use of lemon to scent domestic bleaches and laundry sprays, and lavender to scent carpet deodorants.  As masking scents are commonly used within the trade, purchasers are unlikely to regard the scent as an indicator of trade source, but rather as something that mitigates the normally unpleasant odour of the goods.

Scents which are common to a trade.

A non-functional use, but nevertheless use which is common to the trade, and hence not adapted to distinguish, is use of a scent to make a product more pleasant or attractive.  Potential purchasers of these goods are unlikely to consider these fragrances as an indication of the origin of the goods because the use of fragrance on such goods is common to the trade.  For example, the scent of lemon has been added, over a considerable period of time, to dish washing detergents and laundry products.  While it cannot be said that a lemon scent is "descriptive" of such goods as there is no specific relationship between lemon and the cleaning qualities of such goods, a lemon scent would be treated as not being capable of distinguishing because it is common to the trade.  The use of pine or cedar scents for disinfectants falls into the same category, as do herbal scents for shampoos and soaps.

Scents which may be capable of distinguishing

To be capable of distinguishing the applicant's goods, the scent needs to be something apart from the goods themselves.  It should be neither a natural characteristic nor an expected characteristic of the product, but something added to identify the applicant's goods from those of others in the same market.  Examples which have been accepted in various jurisdictions include the smell of beer for dart flights, and a smell reminiscent of frangipani (plumeria) flowers for embroidery yarn, as well as various fruit perfumes for synthetic motor oils.  In these cases, the perfume did not consist of the natural scent of the product, nor was there an expectation that the product be perfumed.  The scent was something unusual added to the goods to assist in identifying them via olfactory means from the similar products of other traders.