Introduction: Among the various categories of trademarks available to businesses, a select few are classified as “unconventional marks.” These include marks based on sound (such as advertisement jingles), shape, colour, and even smell. Securing registration for such marks has historically been challenging, primarily due to difficulties in representation and the stringent distinctiveness criteria they must satisfy.
For certain businesses, a distinctive scent, much like taste can leave a lasting impression on consumers. In such cases, smell has the potential to function as a source identifier, helping differentiate one business from its competitors. Traditionally, in India, smell marks have not been granted registration due to legal and practical limitations. However, in a significant recent development, one smell mark has been accepted by the Indian Trade Marks Registry.
In this article, we analyse the prosecution history of the accepted smell mark and discuss its implications in the context of unconventional trademark protection.
Facts: A Japanese company called Sumitomo Rubber Industries Ltd, has come up with a unique smell for one of their tiers. The said smell has been described as “A complex mixture of volatile organic compounds released by the petals interact with our olfactory receptor, creating a rose like smell. Using the technology developed by IIIT Allehabad. This whole rose like smell is represented as vector. Whereas the seven dimensional vector represents one of the fundamental smells such as floral, fruity, woody, nutty, pungent, sweet and minty”.
Under Section 2(z)(b) of the Trade Marks Act, 1999, a trademark must be capable of graphical representation. This requirement has long been the primary obstacle for unconventional marks such as smells, as representing a scent graphically is inherently difficult. In the case of Sumitomo’s application, the Registry initially raised objections on precisely these grounds—that the mark was incapable of being represented graphically.
During multiple rounds of hearings, the Applicant’s attorneys argued that while graphical representation is indeed essential, the sensory pie chart and vector representation provided were sufficient to meet the statutory requirement. They further contended that a rose-like smell is universally recognisable, reducing the need for a more elaborate graphical depiction. It was also emphasized that adding a rosy fragrance to a tyre has no functional or technical purpose, thereby supporting its eligibility for trademark protection. The Applicant also cited successful registrations of the same smell mark in the UK and other jurisdictions to demonstrate its acceptability globally.
Based on the materials and explanations submitted, the Registry ultimately concluded that the mark, as presented, was precise, clear, intelligible, self-contained, objective, and capable of graphical representation through adequate means, and accordingly accepted the smell mark for registration.
Conclusion: With the evolving nature of modern businesses, it has become increasingly important to recognise and protect unconventional marks, whether through traditional trademark registration or through sui generis mechanisms. The acceptance of a smell mark suggests a gradual shift towards aligning with global trends and recognising non-traditional indicators of trade origin. However, several concerns remain unaddressed.
In the present case, the mark has been represented using a sensory graph describing the scent as fruity, floral, minty, woody, nutty, sweet, and pungent. While such descriptors may be meaningful to experts in the field, they are unlikely to convey a precise or universally understood representation to the average consumer. This inconsistency becomes problematic because trademarks are intended to function as identifiers from the perspective of the relevant public, not specialists.
Moreover, although the Registry has accepted the smell mark, it has not provided any concrete framework or guidelines for the graphical representation of such unconventional marks. In the absence of clear criteria, applicants are left without direction on how to meet statutory requirements for clarity, precision, and objectivity. This ambiguity not only makes it difficult for others to file similar applications but also risks inconsistent examination standards and challenges in enforcement.
Another challenge that one might face in such cases will be with respect to the enforcement of such marks. Smell marks, by nature, are subjective; they vary with perception, environment, and even product conditions. The Registry did not sufficiently examine how infringement would be determined, how olfactory similarity would be tested, or whether consistent reproduction of the scent across goods could be verified. By accepting the mark without addressing these enforcement gaps, the Registry may have opened the door to ambiguity and potential litigation complexity.
Lastly the applicant has discussed in length that smell in terms of tires is not functional and hence can become a source identifier for the product. However, whether the consumers perceive the smell as a source identifier of the said product or not is a question that is left unanswered. A scent that is unfamiliar in a particular product category does not automatically become a source identifier. The decision fails to demonstrate that consumers would perceive the smell as indicating trade origin rather than as a novelty feature. This raises doubts about whether the distinctiveness requirement central to the registration of any mark was adequately met.
It is safe to say that the acceptance of this mark may encourage other businesses to explore unconventional branding strategies and strengthen their intellectual property portfolios. However, it also raises a critical question: was this step taken as a thoughtful evolution of Indian trademark jurisprudence, or merely an attempt to mirror developments in jurisdictions such as the UK, Australia, and the US? Until clearer guidelines and a consistent framework for assessing unconventional marks are established, the decision risks appearing more aspirational than principled. The true impact of this acceptance will ultimately depend on whether India develops its own coherent standards rooted in statutory requirements and practical enforceability rather than simply following global trends.
Co-authored by Sanika Mehra, Co-Managing Partner ([email protected]) and Shilpa Chaudhury, Principal Associate ([email protected])
