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The future of Scents as Trademarks in the European Community based on a comparison to the American Experience

Erlandsson, Linda Annika (2004)
Department of Law
Abstract
The principal function of a trademark is to give consumers a guarantee of the identity of a market product, by enabling the consumers to distinguish that product from others of a different provenance. In order to make a product stand out in the market place, the industry constantly seeks to invent and use new ways to appeal to customers. Lately, unconventional sensory marks, such as scents have made a commercial revolution. As a result, the demand for legal protection steadily increases. Historically, the first scent mark was registered as a trademark in the United States in 1990 and almost a decade later the only CTM of a scent was recognised. Since then, several trademark applications concerning scents have been refused and according to... (More)
The principal function of a trademark is to give consumers a guarantee of the identity of a market product, by enabling the consumers to distinguish that product from others of a different provenance. In order to make a product stand out in the market place, the industry constantly seeks to invent and use new ways to appeal to customers. Lately, unconventional sensory marks, such as scents have made a commercial revolution. As a result, the demand for legal protection steadily increases. Historically, the first scent mark was registered as a trademark in the United States in 1990 and almost a decade later the only CTM of a scent was recognised. Since then, several trademark applications concerning scents have been refused and according to a recent ruling of the ECJ, it now seems unsure whether or not a scent can be registered as a trademark in Europe. The purpose of this thesis is therefore to examine if scents actually can function as trademarks, whether they are registrable or not, what difficulties they would provoke in determining infringement and, by way of a comparative analysis with the American experience, what their solutions may be in the future in the European Community. Even though scents have implicitly been recognised, the capability to constitute a trade sign under trademark law, remains a difficult matter. They have, in reason of the subjective nature of their perception, difficulties in functioning as reliable indications of trade source. Additionally, a scent cannot be a natural characteristic of the product nor can it, function as essential to the use or purpose of the product. As a result, scents can only function as trademarks under circumstances where the scent is new in relation to the product to which it is affixed or when the scent is particularly unique and used on normally unscented products. Furthermore, in order to be registered, the scent has to fulfil the requirement of graphical representation, the only means of presenting the essence of the mark in printed form. However, the deposit of smell- samples is not possible and the submission of graphical representation in the form of &quot&semicelectronic nose&quot&semic analysis and chromatography have been rejected, as well as the representation by a chemical formula, verbal description or the combination of these reproductions. Although considered not sufficiently precise and clear, verbal descriptions seem to be the only possible solution to afford trademark protection with today's existing technology. Scent mark infringement is also difficult to detect since it depends on the consumer's recollection and ability to differentiate scents resulting in an unpredictable outcome. To conclude, it is not impossible but extremely hard to satisfy the criteria for trademark registration of a scent and neither is it guaranteed that the protection afforded by registration can be assured in a trademark action. Unless the criteria are not set down, it seems like scent will have no future in Europe as trademarks. (Less)
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author
Erlandsson, Linda Annika
supervisor
organization
year
type
H3 - Professional qualifications (4 Years - )
subject
keywords
EG-rätt, Immaterialrätt
language
English
id
1557334
date added to LUP
2010-03-08 15:55:20
date last changed
2010-03-08 15:55:20
@misc{1557334,
  abstract     = {The principal function of a trademark is to give consumers a guarantee of the identity of a market product, by enabling the consumers to distinguish that product from others of a different provenance. In order to make a product stand out in the market place, the industry constantly seeks to invent and use new ways to appeal to customers. Lately, unconventional sensory marks, such as scents have made a commercial revolution. As a result, the demand for legal protection steadily increases. Historically, the first scent mark was registered as a trademark in the United States in 1990 and almost a decade later the only CTM of a scent was recognised. Since then, several trademark applications concerning scents have been refused and according to a recent ruling of the ECJ, it now seems unsure whether or not a scent can be registered as a trademark in Europe. The purpose of this thesis is therefore to examine if scents actually can function as trademarks, whether they are registrable or not, what difficulties they would provoke in determining infringement and, by way of a comparative analysis with the American experience, what their solutions may be in the future in the European Community. Even though scents have implicitly been recognised, the capability to constitute a trade sign under trademark law, remains a difficult matter. They have, in reason of the subjective nature of their perception, difficulties in functioning as reliable indications of trade source. Additionally, a scent cannot be a natural characteristic of the product nor can it, function as essential to the use or purpose of the product. As a result, scents can only function as trademarks under circumstances where the scent is new in relation to the product to which it is affixed or when the scent is particularly unique and used on normally unscented products. Furthermore, in order to be registered, the scent has to fulfil the requirement of graphical representation, the only means of presenting the essence of the mark in printed form. However, the deposit of smell- samples is not possible and the submission of graphical representation in the form of &quot&semicelectronic nose&quot&semic analysis and chromatography have been rejected, as well as the representation by a chemical formula, verbal description or the combination of these reproductions. Although considered not sufficiently precise and clear, verbal descriptions seem to be the only possible solution to afford trademark protection with today's existing technology. Scent mark infringement is also difficult to detect since it depends on the consumer's recollection and ability to differentiate scents resulting in an unpredictable outcome. To conclude, it is not impossible but extremely hard to satisfy the criteria for trademark registration of a scent and neither is it guaranteed that the protection afforded by registration can be assured in a trademark action. Unless the criteria are not set down, it seems like scent will have no future in Europe as trademarks.},
  author       = {Erlandsson, Linda Annika},
  keyword      = {EG-rätt,Immaterialrätt},
  language     = {eng},
  note         = {Student Paper},
  title        = {The future of Scents as Trademarks in the European Community based on a comparison to the American Experience},
  year         = {2004},
}