The registration of an olfactory trademark presents great difficulties and a complex challenge in trademark law. A recent ruling by the Federal Patent Court sheds light on the difficulties and limits of registering this special type of trademark.
A special odor for golf balls was registered as a trademark. The odor mark applied for was:
The trademark consists of the smell of honey from nectar of
broom heather flowers (Cannula Vulgaris) on golf balls
A description was attached to the application:
“Commercially available golf balls are odorless. Heather blossom honey, here in the form of honey made from nectar of flowers of the heather species “Besenheide” (Cannula Vulgaris), has, according to the description in section 3.1.1.2.1. of the new version of the guidelines for honey of the
Lebensmittelbuchkommission beim Bundesministerium für Ernährung und Landwirtschaft in the version of July 27, 2011, a characteristic, strong-aromatic tart odor. The trademark consists of this very smell on golf balls”.
However, the application was rejected by the DPMA. The Office points out the general difficulties of applying for an olfactory mark. According to the Office, the representation of the olfactory mark directed to the sense of smell is only indirectly conceivable due to the lack of a common direct representation option. The specific application was to be rejected as the smell could not be clearly and unambiguously determined. The description of the smell, for example, as “strong aromatic tart” was not considered to be sufficiently precise, as “tart” can have different characteristics and intensities and is therefore not unambiguous. The applicant lodged an appeal against this decision with the Federal Patent Court.
Requirements of the Federal Patent Court for odor marks
The Federal Patent Court dismissed the appeal with Decision of 20.09.2023 – Ref. 29 W (pat) 515/21 and thus confirmed the decision of the trademark office. The core problem lies in the representability of the smell. According to the so-called “Sieckmann criteria” of the European Court of Justice, a trademark must be clear, unambiguous, self-contained, easily accessible, intelligible, durable and capable of being represented objectively.
These criteria were not met in the application for the olfactory mark. The subject matter of the trademark protection could not be clearly and unambiguously determined by the description of the smell by the authorities and the public. The representation of the trademark (here in the form of the description of the smell) must make it possible to reproduce the sign in such a way that it can be clearly and unambiguously determined. To this end, the representation must be self-contained, easily accessible and comprehensible and unambiguous for the users of the trade mark register.
Neither the indication of a chemical formula to define the substance having the odor in question nor the reproduction of odors by means of gas chromatography is sufficient. There is also no recognized international classification of odours which – comparable to the classification systems for colors – would allow a sufficiently objective and precise designation. Even the deposit of an odor sample is not sufficient, as it lacks the necessary stability and permanence
.
Although a literal description is possible, it must be sufficiently precise, which is not the case here. Honey made from nectar of broom heather blossoms” is a rather rare type of honey, which is generally not produced industrially but only regionally in small quantities by beekeepers due to the high amount of work required. It is therefore different in taste, consistency and smell with every harvest. In addition, the smell of honey from broom heather blossoms is occasionally described as “very sweet”
.
Moreover, as the trade mark division correctly stated, the described “strong aromatic tart smell” is not clearly and unambiguously defined. There are different olfactory characteristics of “bitter”. In addition, the human sense of smell is highly individual. For example, a fragrance that has a strong and tart aroma for one person may be only slightly aromatic and not tart for another with a less developed or trained
sense of smell. In addition, the sense of smell changes over the course of a person’s life.
Conclusion
Although it is legally possible to apply for an olfactory trademark, it has so far been de facto impossible. The difficulty lies in describing the smell so precisely and objectively that the subject matter of the trademark can be clearly and unambiguously determined from the register. This case makes it clear once again how high the hurdles are for registering an odor trademark. It remains to be seen whether and how it will be possible to meet these requirements when applying for an olfactory mark.
