Facts
Decision
Comment
In order to register a trademark under Swiss law, the mark must, among other things, be capable of graphic representation. With regard to smell marks, applicants must graphically represent the product's scent. The Federal Administrative Court recently decided that a cooking recipe is not capable of sufficiently describing a smell mark. Therefore, in contrast to colour and acoustic marks, smell marks are still not registrable in Switzerland.
Facts
In 2009 the Trademark Office received an application for the registration of "the smell of candied almonds" in Class 14 (jewellery and watches), Class 28 (games, playthings and similar) and Class 35 (retail business for various goods). The applicant described the smell mark by means of a recipe to replicate the smell of candied almonds prepared by traditional methods, using vanilla, cinnamon and sugar. The Trademark Office refused the application, objecting that the description of the smell was insufficiently precise. According to the Trademark Office, the description was not capable of reflecting the smell in an objective and explicit manner, since the component ingredients consist of natural products and their smell may vary. Further, it was also noted that the degree of caramelisation was not absolutely clear.
The applicant amended the trademark application to include a detailed recipe, explaining not only the preparation method using step-by-step instructions, but also specifying each ingredient in detail (eg, the type of almonds, the quality of the water and the chemical formula for refined sugar). Further, the applicant also described the optimum conditions needed in the kitchen (ie, an area of 12m2 with a tiled floor, stainless steel plumbing, closed windows, no ventilation and a room temperature of 20 degrees celsius). The trademark was defined as the smell created by following this cooking process.
Decision
The Trademark Office rejected the application in its amended version, stating that the smell cannot be graphically represented as it is required under Swiss law. This order was then appealed to the Federal Administrative Court. By its final decision of May 23 2011, the court rejected the appeal based on the following arguments.
First, the court stated that the registrability of smell marks in general has been acknowledged by the Trademark Office. However, a mark of any kind must be capable of being represented graphically in order to be registered as a trademark. Therefore, the question of graphical representation of a smell was treated as the main point of the appeal. The court indicated that the requirement of graphical representation is not intended to impede the registrability of signs that are capable of constituting a trademark. Its purpose is rather to ensure that the subject of trademark protection of a registered trademark is evident to anyone directly and clearly from the trademark register. The register can fulfil its purpose of publicity only if the representation of the mark is clear, precise and intelligible to anyone consulting the register.
The question of how a sign that cannot be perceived visually can be graphically represented remained. The appellant introduced a new kind of graphic representation by combining two different types of representation. It described the smell in words (ie, "the smell of candied almonds") and also submitted a recipe describing the creation of the smell. The court therefore had to consider whether this new kind of graphic representation was capable of clearly describing a trademark. With reference to a decision by the European Court of Justice (ECJ; C-273/00), the court stated that the description of a smell was indeed a graphic representation, however, it was not clear and objective enough to satisfy the graphical representation requirement. The court, for the first time dealing with a recipe, found numerous inexplicit terms in the recipe, such as "water from the Swiss public drinking water network" (which varies from place to place depending on mineral concentration) or "cinnamon" (of which the intensity of smell depends on the degree and length of grinding) and also "almonds" (a natural product of which flavour and smell may vary). Further, it was stated that external odours in the kitchen or deriving from the pan may affect the result. Finally, the measurement of the required cooking temperature could lead to problems.
The reasoning given by the court in support of its decision was that it would be almost impossible for anyone inspecting the register, even with the necessary equipment, to recreate the smell exactly in the way that it was registered. In addition to this, the fact that a person creates the smell (ie, the skill of the cook is a variable) further reduces the objectivity of the description. The court therefore concluded, in accordance with the ECJ and the Trademark Office, that the combination of two different ways of representation is still not sufficient for clearly representing a trademark as it is required under Swiss law.
The attempt of the applicant to convince the court by referring to existing smell marks that have been registered in Europe also failed. The court acknowledged that there are countries that accept smell marks. It pointed out, however, that pursuant to established case law, foreign decisions are not binding precedents on Swiss courts. Further, the ECJ decision (referred to above) states unmistakably that descriptions of smells are not capable of being registered as trademarks, since graphical representation is not satisfied by scientific formula, written description, odour sample or any combination of these methods. Therefore, the applicant could not derive anything from European practice for its own case.
Comment
In contrast to acoustic marks and colour marks, there is no generally accepted international classification system for smells. Without this, it is difficult to envisage how an applicant, however creative in its arguments, will be able to persuade the Trademark Office to register a smell mark.
For further information on this topic please contact Silvana Schweri or Roger Staub at Froriep Renggli by telephone (+41 44 386 6000), fax (+41 44 383 6050) or email ([email protected] or [email protected]).