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Siekmann, does this really mean smells cannot be trademarked?

Written by Tom Mould Work Experience June 2013 on 13 June 2013

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Sieckmann v Deutsches Patent und Markenamt, was a landmark case for trademark law. It held that a scent or olfactory trademark may not be registered due to the fact that it cannot be represented graphically. The need for the mark to be represented graphically is a fundamental principle of trademark law, section 1 (1)TMA 1994 holds that no trademark may be registered unless it can be represented in this way. In this case it was held that the representation requirement was not satisfied by the following means: Chemical formula, Written description, or deposit of an odour sample.  The failure to allow the chemical formula to be allowed, although at first seems absurd, is justified by the fact that the formula doesn’t actually represent the odour it is merely a representation of what the chemical is.

In perspective of perfumes for example it is possible for several perfumes to have the same set of chemicals inside of them; however with the use of different concentrations of the ingredients it can smell completely different, meaning that this is not an accurate way to represent a trademark graphically. A written description and sample is similarly too inaccurate due to the fact that everybody has a differing level of smell and what can smell like something to one person may be completely different for another.

Since this case there have been many unsuccessful attempts to register such goods. There were a few cases that slipped through the net before this case, the most famous being the smell of freshly cut grass added to tennis balls. Before the Sieckmann criteria, it was simply held that the smell must be distinctive. For the smell of freshly cut grass it was stated that everyone knew the smell and would recognise it instantly. Post Sieckmann there has been an attempt to register the smell of strawberries, but this was denied since the smell of strawberries can have up to five different smells.

The current stance on the law begs the question as to whether olfactory marks may ever be protected by trademark law. One glimmer of hope has been the case of L’Oreal v Bellure. This concerned “Smell- alikes” due to the fact that the smells cannot be registered Bellure took advantage by copying fragrances rather accurately and selling them stating that they smell very similar to the more expensive brands owned by L’Oreal. Bellure distributed comparison lists, comparing the smell of their perfume to the equivalent produced by L’Oreal. The court held that although the fragrance was at the centre of the case, the court had to consider the packing and similarities between the two products.

This again demonstrates the lack of protection available for fragrances. If someone tries to copy the packaging and the shape of the bottle then it is likely they may face an action for the tort of passing off or trademark infringement.

Overall this is still a new area for trademark law and as such it is not yet clearly defined whether there is a way to represent a smell graphically.

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