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.
But now we, as seasoned practitioners, must return to mull over the differences sprinkled throughout different jurisdictions approaches to scent and color marks. If each day has a color and smell, then here each country or region should have a spice that carries forward our theme and metaphor.
Sassafras, a spice native to the United States: As we continue the analogy, starting in the United States has an easy singularity: “The sassafras tree is the only North American spice,” and “is an important ingredient in … Creole and Cajun cookery.” But, as with much of American life, additional spices have been imported into this culture, and now thrive here. So it is with efforts to protect color and scent trademarks, and the singular nature of the Lanham Act has nonetheless allowed for deviation and experimentation, albeit not necessarily consistency. For example, recently the color yellow played an important role in two trademark disputes.
In the first, John Deere prevailed in a case in the Western District of Kentucky to product its famous yellow and green color scheme against alleged infringement by FIMCO Inc., a rival agricultural equipment company. The 107-page decision issued October 13, 2017 following a five-day bench trial illustrates the complexity of such analysis under US law. Interestingly, the court enjoined any combination of yellow and green rather than any specific hue of green or yellow:
Defendant FIMCO, Inc. and its affiliates, officers, agents, servants, employees, attorneys, and all other persons in active concert or participation with FIMCO are hereby permanently enjoined from using a combination of green and yellow colors in the manufacture, sale, offering for sale, distribution, promotion, marketing, or advertising of FIMCO trailed and wheeled agricultural equipment at any locality within the United States. This injunction does not prohibit the above described persons and entities from using solely the color green or solely the color yellow in connection with agricultural equipment, nor does it prohibit the use of green with another color or yellow with another color. However, it does prohibit the use of any combination of green and yellow together on a piece of equipment.”
Protecting “any” combination of (possibly) any shade of green and (possibly) any shade of yellow seems broader than protecting, as is appropriate under traditional tests, the specific robin’s egg blue shade that has come to be referred to as “the color TIFFANY BLUE,” and is a registered mark in the United States, Reg. No. 2184128 and 2359351 (boxes), 2416795 (bags) and 4177892 (fasteners).
In the other, the US Trademark Trial and Appeal Board ruled that General Mills could not register the yellow as used in its Cheerios box as a trademark, as Matthew Asbell detailed here last week. The August 22, 2017 opinion made clear that, although “a single color applied to a product or its packaging may function as a trademark and be entitled to registration, … such a color can never be inherently distinctive as a source indicator.” Citing the number of other cereals that have some sort of yellow incorporated into their packaging, the TTAB refused to allow any sort of specific “Cheerios yellow” to move forward.
Scent or smell marks under US law are much rarer, though there was some ado earlier this year over Play-Doh’s scent mark application. As already noted, there are only a very small number of US scent marks, the first issued to a “plumeria blossom-scented embroidery thread, … issued in 1990.” Though that was twenty-seven years ago, only a handful of other scent marks have issued since:
That such a small number of these trademarks have been issued is due in part to the somewhat surprising reasoning behind what smells qualify. According to The Wall Street Journal, “In the U.S., you have to show that a fragrance serves no important practical function other than to help identify and distinguish a brand.” This means that a product whose purpose is only smell-related—like perfume or air fresheners—cannot receive the protection of a scent trademark.
Also, trademark applications have to be smelled by a government examiner, so samples must be provided. As a U.S. trademark official told The Wall Street Journal, “If an examiner’s nose isn’t working, the attorney would have to find a supervisor to do the sniffing.”
“The difficulty in registering a scent mark on the Principal Register appears to have deterred applicants from filing scent mark applications in the United States,” explains the International Trademark Association.
Thus, while both color and scent marks may continue to add zest to the US Register, it seems far from being overpowered by such marks.
In fact, such scent marks, once adopted and registered, leave one in most places moving forward in an enterprise where they are virtually alone—for example, of the millions of registered trademarks in the United States as of 2015, only ten were scent marks. That relatively sparse company might seem liberating to a trademark applicant suddenly transported out of the overpopulated world of word/picture trademarks that, for example and fittingly, Odona Technology (US Ser. No. 78432530), abandoned before attaining registration.
Star Anise, aka Chinese five spice powder (wu xiang fen [五香粉]: “Chinese cuisine derives its attraction not so much from different spices, but from a multitude of meat and vegetable ingredients with different flavour, shape, colour and texture, and from a wealth of standardized cooking and frying methods; the only common spice mixture is the famous five spice powder,” according to spice expert Garnot Katzer. According to Katzer, this spice is warm, sweet and aromatic, and in fact stronger than European anise. With such a strong emphasis on aroma, it is of interest that Hong Kong has many, many more registered scent marks than the United States does. In fact, it is said that the words “Hong Kong” actually mean “fragrant harbor”; with that in mind, the government of the Hong Kong Special Administration Region actually traded upon that notion to actively solicit the registration of scent marks through its Fragrant Harbour project:
What is the goal of “Fragrant Hong Kong”?
“Hong Kong” literally means “Fragrant Harbour.” But where has the fragrance gone? We can optimize the value of a geographical name by reliving its past and pioneering its future.
You can help achieve the goal by raising societal awareness through promoting-
aroma marketing to connect customers with brands;
endeavours to set standards on smells classification; and
the application and registration of smell marks in Hong Kong and elsewhere.
Conversely, reports indicate that mainland China prohibits scent trademarks.
Color trademarks also receive express acknowledgement under the liberal Hong Kong approach. In fact, section 3 of Hong Kong’s Cap. 559 TRADE MARKS ORDINANCE expressly recognizes colors, sounds and smells as registrable:
Without affecting the generality of subsection (1), a trade mark may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging and any combination of such signs.
Thus, it appears that the Hong Kong Special Administration Region has embraced so-called non-traditional trademarks.
Though not as focused on expansion as Hong Kong had been, other Asian jurisdictions, such as Malaysia, have made a “commitment to adopt many nontraditional marks, including scent, sound, shape and texture, as registered trademarks.” Vietnam likewise made such a commitment, though in practice the registration of a single color mark remains a challenge. Similarly, Australia accepts scent marks in theory, but has allowed registration of relatively few, including, given its sporting tradition, a eucalyptus-scented golf tee.
Caraway, A European Spice: Kaster believes that “Caraway is the spice that gives Southern German and Austrian foods, be it meat, vegetable or rye bread, their characteristic flavour …Caraway is a controversial spice; to many, it appears dominant and disagreeable, especially to those who are not used to a cuisine rich in caraway.” The same could be said of the EU’s graphical depiction requirement, which has been a hurdle to scent mark registration:
A trademark can be protected throughout the EU by registering the mark as a Community trade mark (CTM) with the Office for Harmonization in the Internal Market (OHIM). Article 2 of the European Trademarks Directive (TMD) (Directive 2008/95/EC) and Article 4 of the Community Trade Mark Regulation (CTMR) (Regulation (EC) No. 207/2009) allow for the registration of signs, not limited to words and graphics, as long as they can be “represented graphically” and are “capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
The main hurdle that scents need to cross is graphical representation. This issue was addressed by the European Court of Justice in Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00,  ECR I-11737 (ECJ Dec. 12, 2002)). If the sign can be graphically represented “by means of images, lines or characters” in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way, the sign may be eligible for registration. The ECJ ruled that the ways in which the applicant represented the scent mark—which included an odor sample, a description and the chemical formula—did not meet the criteria for graphical representation. It held that a chemical formula merely represents the substance rather than the scent (see “Smell, Sound and Taste—Getting a Sense of Non-Traditional Marks,” WIPO Magazine, Feb. 2009, at 5) and does not satisfy the criteria that a written description must be so precise that it would not permit confusion….
The EU has been heavily influenced by the Sieckmann graphical representation standards. In practice, this landmark decision has almost closed the doors for scent marks in the EU. In fact, there is not a single Community scent mark on the register today, as the mark “the smell of fresh cut grass” lapsed in December 2006 as a result of non-renewal.
[INTA Bulletin, The Status of Scents as Trademarks: An International Perspective]
Despite increasing interest in such marks worldwide because, as one commentator has noted, “[s]mell is said to be one of the most potent types of human memory, and businesses show increasing interest in pairing pleasant scents with their products,” the EU has not shown increased applications in recent years, according to the World Trademark Review.
In this and other jurisdictions, that is because the scent cannot serve any purpose other than identifying the product as one from that manufacturer. If the scent serves the function of whetting the appetite of the customer in some manor, the scent is then likely seen as a functional component that is not registerable as trademark. Naturally, some products, such as the delicious and aromatic caraway-flavored liquor, known as akvavit in Scandinavia, need not (and perhaps could not) therefore register its aroma as mark. That is because the distinctive aroma (that may “blast… caraway and dill on the nose” as it were) is an essential element of the product itself, which also gets its distinctive flavor “from spices and herbs.” Of course, even a full European federation bar on scent marks would not keep this “too undiscovered spirit” from being universally enjoyed any more than an embargo on Cuban cigars or a ban on importing a certain ale kept them from being smuggled through neutral zones of trade.
Color marks, on the other hand, have gotten beyond such requirements, as graphic representation under Article 2 of Directive 89/104 is more easily achievable for color marks. In the case of Libertel Groep v Benelux Merkenbureau the European Court of Justice held that colors themselves can be registered as trademarks, but only in restricted circumstances so long as the applicant specifies where and to what extent the color will be used. This issue played out somewhat in the UK case known as Société Des Produits Nestlé SA v Cadbury UK Limited where the Court referred to the EU’s requirements under Article 2 of Directive 89/104. Because the distinctive “Cadbury purple”, used for over a century by the company, splashed across the entire wrapper registration was refused, as was Cadbury’s appeal. As one commentator noted:
Cadbury’s purple was said to be ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods’. Furthermore, during court proceedings ‘the exact visual presentation’, meaning a precise description of the packaging outlay, was not clarified. The absence of a precise description could give Cadbury a huge advantage over its competitors, as the colour in discussion could be used however they saw fit. Hence, the Court concluded that Cadbury’s mark did not constitute ‘a sign’ and thus failed to satisfy conditions (i) and (ii) of Article 2 of the Directive.
Thus, while colors are possible marks, their possibilities have limits under this sort of approach.
A Next Generation of Trademarks?: Clearly, color and scent are part of transitioning of our law and economy toward a next generation of non-traditional trademarks that may also now include more frequently taste marks, texture marks and animated marks, and this piece examines only a few of the outposts in which this next generation of marks will be found. While data seems missing here on the present economic value or expected impact of such marks, these color and scent trademark trends will doubtless influence our laws and our economies, and perhaps present a new bundle of branding and sales opportunities to trademark owners ranging from the Kivas (Kiva Health Brands, LLC owns, among other “Kiva” marks, US Reg. No. 4514257 for spices) to the Tellurians (Tellurian Technologies, Inc. owns US Reg. No. 1867404 for frequency control devices) of our world looking to make their mark in the future through color or scent.
For now though, with the paucity of color marks and even fewer scent marks, any further or more detailed analysis is risky. These elements that have spiced up trademark law are revealing nothing more as yet–just as The Mistress of Spices implored near the end of that book “Spices what are you doing[?] What teasing trick is[?]. No answer.” Like her, we will keep asking, and listening…til each day (or at least every product that wants one) has a registered color and smell.