Fragrance as a trademark?

The continuous development of consumerism and the introduction of new products and services causes manufacturers to look for effective promotion methods to increase profits and broaden their customer portfolio. Color, shape, taste, or smell are more and more willingly used for promotion, forming the so-called sensory marketing strategy, also known as the marketing strategy of the five senses. The scent is considered to be the factor that most strongly influences purchasing decisions. Therefore, it is worth answering the question of whether it is possible to legally regulate the use of fragrance as a brand element, distinguishing our product from other goods, promoting the assortment, protecting the interests of its owner.

The power of fragrance

Smell is the most active human sense, and fragrance is the most memorable of all received messages [1]. Scented stimuli reach the brain directly and faster than other signals from other senses, because the human body reacts to them without the participation of consciousness [2]. It has been proven that the sense of smell affects not only the emotional state of a person, but also the functioning of their memory, and scents make the event accompanied by aroma – evoking emotional memories – almost photographically remembered and recorded in memory [3].

Marketing and consumer behaviour specialists indicate that a fragrance can cause specific behaviours, and by combining marketing and fragrance a new marketing concept was created – scent marketing [4]. It uses the influence of odors directly on the human subconscious. Thanks to this it is possible to effectively influence customers’ decisions without being aware of any suggestions. Including scent marketing in the business strategy allows to achieve sales growth and gain loyal customers, creating a positive image of the place of purchase, brand and its products.

Scent as a brand element

The power of smell is used by many brands. This can be observed by strolling through the alleys of shopping malls. Vistula store or Massimo Dutti will certainly not go unnoticed. The specific fragrance notes, which have remained unchanged for years, make it impossible for potential customers to overlook them.

Including a fragrance in a brand-building strategy is essential in creating a strong entity in the market. Combining it with other elements, such as a trademark or a specific assortment, creates a “tailor-made” brand, addressed to a specific group of recipients who identify themselves with its philosophy.

The smell may be registered as an unconventional trademark. This is possible on the basis of regulations which, as far as EU marks are concerned, became effective on October 1, 2017, and as far as Polish marks are concerned, on March 16, 2019, and which abolished the need to present the mark graphically, replaced by the requirement to present the sign in the register so that the subject of protection can be precisely determined.

7 Sieckmann’s criteria

Implementing a slightly more abstract definition of a trademark does not mean, however, that anything can be a trademark. In the case of a fragrant trademark, the basic problem is to present the sign in the register in such a way that everyone can read it without any problem. It is extremely important if only to ensure that nobody – also inadvertently – violates the registered right. While it is not a problem to get acquainted with a graphic or word mark, the smell seems to raise some doubts.

The judgment of the Court of Justice of December 12, 2002 (Case No. C-273/00) and the so-called 7 Sieckmann criteria, which are included in the judgment, are still used as the point of order. It was explained that the graphic representation of the sign must be:

1. clear,
2. precise,
3. complete in itself,
4. easily accessible,
5. understandable,
6. durable, as well as
7. objective.

Although the current legislation has abolished the requirement for the graphic representation of a trademark, the publication and registration of the sign in question must still be sufficiently precise and clear. Sieckmann’s 7 criteria indicate its essential features, which is particularly difficult to achieve with a fragrant trademark.

Thus, as it follows from the above, the biggest challenge in registering a fragrance mark is its proper way of representation, meeting Sieckmann’s 7 criteria. The European courts have indicated in their jurisprudence practice that this can be done by means of:

1. verbal description of the mark,
2. chemical recording, or
3. a sample of the scent left in the depository.

It should be borne in mind that we still do not have the appropriate technologies to permanently “close” the fragrance and deposit it. In practice, offices do not allow for the possibility of delivering a scented sample. However, the chemical record makes the number of recipients who will understand it limited. This, in turn, leads to a failure to meet Sieckmann’s 7 criteria.

The verbal description of the sign remains. However, there are also problems here. It should be noted that everyone perceives each of the scents in a slightly different way. It will be very difficult to create a universal and uniform description in the reception by everyone. Moreover, in the already mentioned judgment of December 12, 2002 (ref. C-273/00), it was explained that the description of the sign cannot replace the representation, because the description of the fragrance is not clear, accurate, or objective.

Examples of registered perfume trademarks

One fragrance mark for tennis balls (EUTM-000428870) has been registered in the European Union. The applicant described it with the words “The smell of fresh cut grass”. This mark is no longer valid.

In the UK, a rose fragrance has been registered for the designation of tires (UK 0000 2001416), indicating that “The trade mark is a floral fragrance/smell reminiscent of roses as applied to tyres”, as well as the scent of bitter beer for the designation of darts for darts (UK 0000 2000234), with the application describing “The mark comprises the strong smell of bitter beer applied to flights for darts”.

In the United States, however, the smell of cherries has been registered for lubricants (US 2463044), describing it with the words “The mark consist of a cherry scent” and the smell of chocolate for the marking of jewelry sales services (US 4966487) with the laconic description “Non-visual chocolate scent mark”. The U.S. Patent and Trademark Office has developed the practice of the so-called “functionality doctrine”, which allows for a more free approach to registration of fragrant trademarks while preventing monopolization of a product feature that is directly related to its use or affects its quality.

Despite the apparent facilitation of the registration of fragrance as a trademark as a result of the introduced amendment to the regulations, not much has appeared in the registers. Offices are still extremely sceptical about the registration of fragrances.

Worth trying

Although the decisions made by the authorities so far do not inspire optimism about the possibility of registering an unconventional trademark in the form of fragrance, it is worth trying to finalize such an application. Reservation of a specific fragrance, appropriate only for one entity operating on the market, will certainly have a great impact on brand development and building business position and customer portfolio.

[1] Judgment of the Court of First Instance of 27 October 2005, T-305/04, Eden SARL v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), paragraph 25, EU:T:2005:380.

[2] J.C. Chebat, R. Michon R., Mall atmospherics: the interaction effects of the mall environment on shopping behavior, “Journal of Business Research”, No. 58, Manhattan 2005, s. 576-581;

[3] I. Skowronek, Oddziaływanie zapachem jako forma marketingu sensorycznego, „Marketing i Rynek”, nr 1, Warsaw 2011, s. 6-11;

[4] A. Rudzewicz, S. Makarski, A. Małysa-Kaleta, T. Heryszek T., Innowacje w marketingu, Olsztyn 2010, s. 64.