Can smell marks be registered as trade marks in the UK? Duh. Or, can you?

It has been almost two months since my Trade Marks course here at the University of Exeter commenced. By far, the topic, or perhaps, controversy which intrigued me most is the uncertainty revolving around registration of smell marks under the UK’s law.
 
At the forefront of the cases relating to sound marks is the case of Sieckmann. In light of the requirement of “graphical representation”, the European Court of Justice (ECJ) stated that “although a scent is in theory capable of acting as a trade mark, the requirement of graphic representation can never in practice be satisfied”.*1 Furthermore, the ECJ has made it clear that all marks must satisfy the Sieckmann criteria: a (graphical) representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
 
In Sieckmann, the ECJ interpreted the term ‘sign’ quite broadly, including ‘smells’ as one. The ECJ in this case has been criticized for not justifying its reasoning when it began to assess if a non-visually perceptible “sign” such as a smell will satisfy the test of graphic representation, ironically since the same Court ruled that the test can never be satisfied in practice. How will a smell be precise? How can the general public possibly recognize every smell which is potentially registrable? It cannot. It is quite illogical for the ECJ to have taken this approach in the Sieckmann case.
 
But even prior to questioning this flawed conception of the ECJ of smell marks being able to satisfy the Sieckmann seven criteria, one may stop to wonder whether a smell could be registered as a trade mark in the first place. It seems to be a quandary for the ECJ. Yes, I agree that Article 2 of the Directive reads “any sign capable of graphic representation”, but “an express exclusion of non-visually perceptible signs in Article 2 is not of itself an endorsement for their inclusion.” *2 Even with the “graphic” element of representation now removed from the new, updated Trade Marks law, in my opinion, the requirement of the Sieckmann criteria will still present hurdles for the registration of smell marks.
 
 
*1 Robert Burrell and Michael Handler, ‘Making Sense of Trade Mark Law’ [2003] IPQ 388, 2 para 3.
*2 Robert Burrell and Michael Handler, ‘Making Sense of Trade Mark Law’ [2003] IPQ 388, 6 para 1.


What do you think about the trade mark law in relation to registration of smells? We would love to hear your opinion. If you want to write to us about any matter in IP law which you find interesting, please get in touch.
 
Till then. Let’s keep IP fresh, on IP Frontier.

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Physical v Intellectual Property

Physical property, a concept we are all familiar with. Essentially, it is a term for all those things which can be owned. On the other hand, there are some things which cannot be owned, like people and air. But most other kind of property can be owned.

When we speak of the term ‘property rights’ we mean the rights an individual person has over certain kinds of property. Such rights give us the ability to buy and sell, use and possess something that we own. Furthermore, we can even prevent others from doing something on our property. Let’s say I own a house; now it is up to me what I can do with it. I can renovate it, or have it wrecked. As long as I have the property rights over it, I can carry out such actions and my rights prevent you from doing anything on my property without my permission.

Moving on to the concept of ‘Intellectual Property’, IP rights cover the permission that we have with regard to physical objects. It can be said that intellectual property is a term for all the products of the intellect that can be owned in some sense.

Contributed by Muhammad Ali Magoon, a UoL LL.B graduate.

What do you think about this short article on Physical and Intellectual Property assets? We would love to hear your opinion. If you want to write to us about any matter in IP law which you find interesting, please get in touch.

Till then. Let’s keep IP fresh, on IP Frontier.