The search for spices, and the gold that one expected to find nearby (or earn through sale of the spices), in many ways drove the Age of Exploration. And spices still hold a special place in our economy and in our imagination; in fact, we believe that spices “all hold magic.” Part of that magic is that spices give “[e]ach day … a color, a smell,” as we are told by The Mistress of Spices herself. Well, color and smell (or the more delicate scent) are now adding spice to trademark law around the world as businesses explore new ways to differentiate their goods and services from those of their competitors. Getting trademark protection for color and scent may depend where you seek such protections, as the rules vary from country to country.
Spicing Up Trademarks: Before charting the different approaches found across jurisdictions, some basics will help one understand the course of such considerations. At its most basic level, according to World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (or TRIPS, which this blog has addressed before), trademarks encompass “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings” (TRIPS, article 15(1)). Color can be such a “sign” according to INTA (or the International Trademark Association) (as quoted in AdWeek), but only where the trademark owner can “’show that the consumer, upon seeing the color used in connection with the goods or services, views the color not as merely ornamental but, rather, as a means of indicating the origin of those goods or services.’” Many jurisdictions also recognize that smell/scent can be such a “sign” because “scents do have the ability to convey information through our olfactory system,” but others do not do so because, as INTA notes, “[s]cent marks are more problematic than visual trademarks as they are defined subjectively and are therefore open to interpretation. The complications that arise from human perceptions of odors lead to the argument that subjective views are inadequate when determining whether the scent mark functions as a trademark.” Indeed, “temperature, humidity levels, and wind conditions can greatly affect both potency of a scent and the scent itself,” which one commentator noted is problematic not only for registration and enforcement, but for recognition itself (after himself previewing his legal analysis with a fairly biologically and anatomically detailed definition and explanation of the term “olfactory”). Trademark offices, such as the USPTO, nevertheless do have procedures for submitting scent (and event taste) samples. Continue Reading