Laboratoires France Parfum had applied for a community trade mark in 1999 – sending a picture of a strawberry with its application, given the need for trade marks to be represented graphically. Its plan was to use the smell in soaps, face cream, stationery, leather goods and clothing.
The application for what is classed as an "olfactory sign" in the trade marking lexicon failed on the grounds that the mark could not be represented graphically and was devoid of any distinctive character.
Laboratoires France Parfum appealed to the Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) without success.
In the meantime, the perfume company was taken over by Paris-based Eden SARL. It took the case to the European Court of First Instance, arguing that the description and image together were sufficient to “graphically represent” the mark.
The Court of First Instance disagreed.
The Court accepted that a trade mark might consist of a sign that is “not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters”. But it stressed that the representation must nevertheless enable the sign to be precisely identified.
The Court did not rule out the possibility of an olfactory sign being the subject of a description that met all the requirements, but found that it did not do so in this case.
A study submitted to the Court showed that different types of strawberries produced different smells, with the result that the description “smell of ripe strawberries” could mean one of several different smells.
The Court added, “there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell.”
The written description was therefore not precise enough.
Turning to the strawberry image, the Court was unimpressed. It decided that the image represented only the fruit producing the smell for which the trade mark was claimed, and not the smell itself. Therefore, it could not amount to a graphic representation of the mark.
The UK's first olfactory trade mark was granted to Japan's Sumitomo Rubber Co. in 1996 for "a floral fragrance / smell reminiscent of roses as applied to tyres”. The mark was later transferred to Dunlop Tyres.
The same year, Unicorn Products, a London-based maker of sports equipment, registered a UK trade mark for "the strong smell of bitter beer applied to flights for darts."
In 1999, the first Community Mark for a smell was granted to Vennootschap onder Firma Senta Aromatic Marketing of Holland. It registered "the smell of cut grass" for tennis balls.
However, trade mark applications for smells rarely succeed. Chanel failed to register the smell of Chanel No 5; and furniture-maker John Lewis of Hungerford plc failed to register the smell of cinnamon applied to furniture.
