India has accepted its first smell mark application for advertisement, with the Trade Mark Registry acknowledging a Japanese company’s trademark for a “floral fragrance / smell reminiscent of roses” applied to tyres.
As per media reports, the application has been filed by Sumitomo Rubber Industries Ltd. on March 23, 2023, in Class 12 for tyres for vehicles under the Nice Classification, on a “proposed to be used basis”.
The Trade Mark Registry has noted that this is the first smell mark to be accepted for advertisement in India and has recognised the scientific, technical and legal inputs provided by the amicus curiae due to the complexity surrounding the graphical representation of the smell mark.
The application has been examined and initially objected to for lack of distinctiveness and absence of a graphical representation, but the company has responded with supporting arguments and materials. The Registry has held that the olfactory mark has satisfied the criteria under the Trade Marks Act, 1999, stating that it is “clear, precise, self-contained, intelligible, objective and represented graphically”.
The Registry has also acknowledged the role of professors from the Indian Institute of Information Technology, Allahabad, who have prepared the graphical representation required for the proceedings.
The order has further observed that the rose scent infused in tyres has been considered arbitrary to the nature of the goods and capable of creating a strong association for customers, making it distinctive. The Registry has directed that the application be advertised under Section 20 of the Trade Marks Act, 1999, as an olfactory mark in Class 12 on a “proposed to be used basis”.
Counsel for the company has submitted that rose fragrance has been incorporated into their tyres since 1995 as part of product development and strategy, and that the mark has already been registered in the UK as a scent trademark, demonstrating its distinctiveness. The company has also argued that there is no scent comparable to that of roses, and it leaves a memorable sensory impression when applied to rubber tyres.
The order has highlighted that this application has set a precedent by challenging conventional legal boundaries in trademark law in India, marking a significant development in the recognition of non-traditional trademarks in the country.
