The registration of olfactory marks in Europe: a long way ahead

The reform of Law 17/2001, of December 7, on Trademarks, through Royal Decree-Law 23/2018, of December 21, on the transposition of trademark directives, which transposes the EU Directive 2015/2436 of the European Parliament and the Council of December 16, 2015, represented a paradigm shift in the consideration of the concept of branding.

Under the previous regulation, the trademark is defined as “a sign susceptible to graphic representation that serves to distinguish the products or services of one company from those of others” in the market.

This meant that, in order for something to acquire that status of distinction in the eyes of the legislator, it must be able to graphically represent that distinctive sign. Consequently, olfactory (or tactile) marks were excluded from trademark protection because they could not be effectively represented graphically before the Registry.

Of course, this did not prevent attempts to register olfactory marks. A clear example is case C-273/00 of December 12, 2002, in which the Court of Justice ruled on the possibility of graphic representation of an olfactory mark for the pure chemical substance methyl cinnamate. To this end, the applicant attached the chemical formula of the composition C6H5-CH = CHCOOCH3 and included a sample of the smell in a container, indicating that the aroma is usually described as “fruity balsamic with slight reminiscences of cinnamon”.

The Court of Justice, when asked whether a chemical formula was sufficient to consider that the graphic element is considered completed if combined with a sample collected in a suitable container and a description of the smell.

The answer to this question is found by the Court after consulting the Governments of Austria and the United Kingdom who, together with the Commission, identified numerous problems in this system: first of all, the mere chemical formula does not take into account other factors (concentration, quantity, air temperature, support), the general public does not have enough knowledge to recognize an odor by seeing a chemical formula, its preservation is not possible without deterioration (so it is not lasting), among others.

With regard to the description of the odor, it was indicated by the Court that these assessments were excessively subjective and that the requirements of precision and objectivity were not met and, consequently, the denial was maintained.

This decision was not without debate, since there was part of the more open-minded doctrine that considered that the registration of olfactory marks should be allowed (taking into account that some had already been registered in national offices) and that, although a verbal description may have subjective characteristics, this is no obstacle to a description being made by specialists or that, if a chemical formula is not recognizable, neither should a pentagram (which, however, is accepted as a graphic representation).

All this changed with the transposition of the Directive, since the following was established as a new concept (art. 4). LM):

“All signs, especially words, may constitute marks, including names of persons, drawings, letters, numbers, colors, the shape of the product or its packaging, or sounds, provided that such signs are appropriate for:

distinguish the products or services of one company from those of other companies;

be represented in the Trademark Registry in such a way as to allow the competent authorities and the general public to determine the clear and precise purpose of the protection afforded to its owner”.

Therefore, although the function remains the same (distinguishing products of one company or another), a graphic representation is no longer required but a mere representation that allows us to distinguish the object of protection in a clear and precise way.

Subsequently, the Commission's Implementing Regulation (EU) 2018/626 has indicated, as was the case with the cited judgment, that the representation must be made “in a clear, precise, complete manner in itself, easily accessible, intelligible, durable and objective, in a way that allows the competent authorities and the general public to clearly and accurately determine the precise purpose of the protection granted to its owner.”

As a result, olfactory brands present great difficulties because, today, no technology is available that allows an objective or generally accepted classification of odors, nor is there one that allows them to be preserved or reproduced without alteration and that is maintained in similar ranges for different people.

There are currently companies working on technologies applied to virtual reality that allow the generation of olfactory stimuli that, without using the smell itself, allow us to generate a physiological response that makes the body recognize that scent as such.

Carlos Azcárate Revilla, Legal Counsel, Legal Army