According to Aditi Verma Thakur, managing partner of Aishani Partners in Bengaluru, this serves as a significant reimagining of trademark practice in India. “It shows that when branding evolves into new domains and territories, the Indian regulator is prepared to update its toolkit as well,” she said.

“The Controller in this case expressly acknowledged that an olfactory or a smell mark cannot be treated in the same way as a conventional trademark, yet the statutory requirement that a mark be capable of being represented graphically still had to be satisfied,” Thakur related.

The floral scent was not found to be generic, descriptive or functional.

The Trade Marks Registry also appointed an amicus curiae – in this case, Anand and Anand managing partner Pravin Anand – to assist in the assessment of the mark, particulary in relation to the requirement for graphical representation. An amicus curiae is a Latin term meaning “friend of the court.” He or she has the legal expertise but is not party to the case, therefore the amicus curiae can assist by providing his or her insights and analysis of the case.

“For graphical representation, innovators at the Indian Institute of Information Technology employed a novel technical methodology, defining the scent in a seven-dimensional vector space, each dimension corresponding to one of seven fundamental smells: floral, fruity, woody, nutty, pungent, sweet and minty. Any serious challenge to such a registration would, in practice, have to challenge this representation using equally innovative or superior technology. If a challenger can demonstrate a difference between the scent as mapped and the scent as actually perceived in the market, the registration could be attacked as having been wrongly granted in the first place or even on grounds of non-use,” Thakur shared.

Aside from referring to the amicus curiae’s legal submissions, the Controller also analyzed how other jurisdictions have approached olfactory marks. Among these are the UK, where the same olfactory mark was registered in 1994, as well as Australia and the U.S. Both jurisdictions’ position is that generic smells such as lemon for cleaning liquids, or functional odours such as a perfume-like smell performing a masking role, should not be monopolized as trademarks.

“On the conflicts side, future disputes will also turn on how convincingly a right holder can establish prior use of a particular scent in relation to their goods, as against subsequent users seeking to appropriate the same or similar olfactory identities as trademarks,” said Thakur.

“By validating a technology-led approach to denominating a smell mark, the Registry has effectively laid the groundwork for future protection of other non-conventional marks, inviting applicants and experts to collaborate on scientifically robust ways of representing what was once thought to be legally indescribable,” Thakur concluded.

- Espie Angelica A. de Leon