Thesis: Comparison of US Versus EU Trademarks in Areas Such as Smell and Sound

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¶ … U.S. VERSUS EU TRADEMARKS

IN AREAS SUCH as SMELL and SOUND

The objective of this work is to examine the United States Law and the European Union Law on trademarks specifically in the area of smell and sound and to make a comparison of the U.S. And EU trademark laws in this area of trademarks

THE EU 'COMMUNITY TRADEMARK'

The work of Bhagwan, Kulkarni, and Ramanujam (2007) entitled: "Economic Rationale for Extending Protection to Smell Marks" relates that the Community Trademark "...which covers the entire European Union, is obtained by a single registration procedure filed in by a single office and governed by a uniform law. It currently consists of countries, which include Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the United Kingdom. It is administered by the Office for Harmonization of the Internal Market (OHIM) headquartered in Alicante, Spain."

Bhagwan, Kulkarni, and Ramanujam state that application for registration of a trademark will be rejected if "...he trademark cannot be graphically represented. This essentially means that the mark must be capable of being represented or described in some way on paper. Thus, for the purposes of registration, trademarks must be represented in a form that can be recorded and published..." (2007) a trademark "is a word, symbol, or other signifier used to distinguish a good or service produced by one firm from the goods and services of other firms. Accordingly Article 15(1) of the TRIPS agreement provides that any sign, or combination of signs, capable of distinguishing goods and services from those of others is eligible for trademark protection." (Bhagwan, Kulkarni, and Ramanujam, 2007)

The United States Law on trademark is stated to stem "...from a collection of laws and regulations3, accordingly the term 'trademark' includes any word, name, symbol or device or any combination thereof used by a person, or which a person has bona fide intention to use in commerce to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." (Bhagwan, Kulkarni, and Ramanujam, 2007)

II. EU and U.S. OLFACTORY TRADEMARKS

The work of Julia Anne Matheson (2003) entitled: "The Sweet Smell of a Successful Registration" states that trademarks "offer consumers critical shorthand to identify and distinguish among the ever increasing range of available products. Ideally, a trademark acts as a guarantee of consistent quality, an indication of origin, and a valuable marketing and advertising tool capable of conveying an enormous amount of information about a product's character, price, quality, and general desirability without constant consumer re-education. A trademark's effectiveness derives from its ability to convey (first) and to evoke (subsequently) a wealth of information about a product with minimal space, time, and effort. Psychologists have repeatedly confirmed that among our senses, scent offers the strongest effects on memory, far surpassing sight or sound."

Matheson (2003) states that the Lanham Act "uses the broadest possible terms to describe the range of items that can qualify as trademarks. Although scent marks are not specifically enumerated in the Lanham Act, U.S. law recognizes that scent can function as a source identifier where it has no utilitarian function." In the absence of evidence that a scent mark has gained a meaning that is secondary, the "Trademark Manual of Examining Procedure provides that scent marks are registrable on the Principle Register under Section 2(f) or on the Supplemental Register." (Matheson, 2003)

There is a substantial amount of evidence required in establishing that a scent in actuality functions as a mark. Matheson states: "To date, the scent marks accepted for registration in the U.S. have been limited to scents commonly known and readily identifiable to the majority of the public through personal experience. The U.S. Patent and Trademark Office ("USPTO") has issued registrations for a total of five olfactory marks and has passed several additional applications to publication. In each case, the applied-for scents have consisted of a commonplace unadulterated scent immediately intelligible to the majority of the public detailed in a straightforward written description. Following the Qualitex decision (imposing the requirement of demonstrable secondary meaning), no scent mark has graduated to registration on the Principal Register." (2003)

III. REGISTRATION of OLFACTORY MARKS

Just as in the United States the European Union's Office for Harmonization for the Internal Market (OHIM) "...recognizes that the olfactory marks are eligible for trademark registration." (Matheson, 2003) However, unlike the USPTO the OHIM "has repeatedly grappled with the problem of clear graphical representation of olfactory marks even where the scent consists of a commonplace unadulterated scent capable of a straightforward written description. To date, this issue (as contrasted with the problem of proving secondary meaning) has presented the most significant barrier to registration of these marks before OHIM." (Matheson, 2003)

The Community Trade Mark Office (CTM) in 1999 "...considered whether the scent of fresh cut grass could be registered as a trademark for tennis balls. Initially, the application was refused on the ground that the words "the smell of fresh cut grass" did not qualify as an adequate graphical representation of the mark capable of depiction in a shape or form as required by Article 4 of the Community Trade Mark Regulation. On appeal, the Board of Appeal decided that the scent of fresh cut grass is a distinct scent known to, and recognizable by, the majority of the population from experience, and thus that the mark's description was appropriate for registration." (Matheson, 2003)

The meaning of 'graphical representation' was revised by the OHIM in 2001 specifically "with respect to the scent of raspberries as applied to engine fuels. The registration was initially refused on the ground that the application did not contain a graphical representation of the mark nor a precise description of it. Although OHIM ultimately upheld the refusal theorizing that the application lacked the necessary distinctiveness in relation to the goods claimed, the office found that "the smell of raspberries," like "the smell of fresh cut grass," was a sufficiently well-known and distinctive scent that the description would otherwise qualify as a sufficient graphical representation eligible for CTM protection." (Matheson, 2003) more conservative view of olfactory marks has been taken by the Advocate General for the European Court of Justice in a decision issued November 5, 2001, in which it concluded that "...olfactory marks are incapable of registration until a satisfactory means of graphic representation for such marks is found." (Matheson, 2003) This case in which this proclamation was issued was concerning an application for a fragrance "...described as "fruity balsamic with delicate hints of cinnamon" for services in classes 35, 41, and 42. The application included a chemical formula and invited readers to sample the scent at local laboratories. Similar to the requirements in the United States, the legislation governing that application provides that to be registrable, a trademark must have a distinctive character and be capable of precise graphic representation comprehensible to those consulting the register. The AG ultimately concluded that the submittal of a scent's chemical formula, a written description, a sample, or a combination of any of the foregoing could not qualify as an acceptable form of graphical representation within the meaning of the rules. As a result of the AG's decision, even commonplace unadulterated scents (such as freshly cut grass) immediately intelligible to the majority of the public and capable of depiction in the form of a straightforward written description will be denied registration." (Matheson, 2003)

IV. PROBLEMS WITH TRADEMARKING SCENTS

One of the most limiting aspects in the present protection for olfactory marks is that all marks "...regardless of type, must be capable of clear and unambiguous graphic representation to allow for accurate and effective searching and clearance by the trademark office, by third party trademark owners, and, ultimately, by the courts." (Matheson, 2003) Non-traditional marks including colors and sound marks have been developed widely as well as being widely accepted for identification systems. An accepted color code is used in referencing color marks and one example of this is the Pantone Matching System while musical sound marks are represented by musical notations. However, there has not to date been introduction of such an identification system for identifying scent marks.

Matheson reports that in the April 2001 article published in 'News in Science' it is related that a "..., computer-generated scent simulation technology is fully developed and currently available for widespread commercial application. Presuming that olfactory marks will eventually advance beyond a single unblended everyday scent, the implications of this technology for trademark identification purposes is apparent. Assuming widespread access, the olfactory clearance process could become as easy as clicking on an icon or traveling to a link to obtain a whiff of the scent covered by each mark. Alternatively, scent descriptions could be supplemented with graphical profiles or gas chronomographs of the scent created by electronic nose technology. Though the latter methods admittedly require either specialized technology or a certain level of technical skill… [END OF PREVIEW]

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"Comparison of US Versus EU Trademarks in Areas Such as Smell and Sound."  Essaytown.com.  December 15, 2008.  Accessed September 16, 2019.
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