Olfactory trademarks :Judgement of The Court of First Instance of the EC - T 305/04


On 27/10/2005, the Court of First Instance of the European Communities gave a judgement T-305/04 regarding olfactory trademarks and their representation.

On 27/10/2005, the Court of First Instance of the European Communities gave a judgement T-305/04 regarding olfactory trademarks and their representation.On 26/03/1999, an olfactory Community trademark application was filed "smell of ripe strawberries + representation of a red strawberry" to designate goods of classes 3, 16 18 and 25.On 07/08/2003, the Examiner rejected the application pursuant to article 38 of Regulation No. 40/94, on the ground, first, that the olfactory sign applied for was not capable of being represented graphically and therefore fell under Article 7(1) (a) of that regulation and, second, that it was devoid of any distinctive character within the meaning of Article 7(1) (b) of that regulation, in respect of some of the goods claimed.An appeal was lodged against this decision, which was dismissed by the First Board of Appeal of OHIM on the ground that the mark was not capable of being represented graphically. It is again this decision that an appeal has been ledged.According to Case C-273/00 - Sieckmann, the graphic representation of an odour may be done by means of images, lines or characters and must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective" (paragraph 55), and, in particular "the requirements of graphic representability description in written words, by the deposit of an odour sample of by a combination of those elements" (paragraph 73). According to the applicant, the evidence adduced shows that the smell of strawberries does not vary from one variety to another, and that only the taste differs according to the variety. It concludes that the smell of ripe strawberries is stable and durable. It adds that the smell deposited is also a specific one since it is not just any strawberry smell but that of ripe strawberries. Moreover, that smell would be well-known to consumers who will have memories of it from childhood.As regards the study presented by the applicant, it appears for the Court that different strawberries varieties can be differentiated by their smell which allows to demonstrate that the smell of strawberries is not unique.It must therefore be held that the evidence adduced before the Board of Appeal shows that the smell of strawberries varies from one variety to another. Consequently, since the description "smell of ripe strawberries" could refer to several varieties and therefore to several distinct smells, it is neither unequivocal nor precise and does not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed. It is, moreover, common ground that, at the present time, there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell. As regards the figurative representation if the red strawberry, the Court quoted the judgement Sieckmann (paragraph 69), according to which the graphic representation of an olfactory mark must, in order to be accepted, represent the odour whose registration is sought and not the product emitting that odour. It therefore held that the chemical formula of the substance emitting the odour in question could not be regarded as a valid graphic representation. The Court of First Instance cannot but find therefore that since the image of a strawberry contained in the application for registration represents only the fruit which emits a smell supposedly identical to the olfactory sign at issue, and not the smell claimed, that does not amount to a graphic representation of the olfactory sign. Moreover, that image is subject to the same criticism as the description "smell of ripe strawberries". As it has been established that strawberries, or at least some of them, have a different smell according to their variety, the image of a strawberry whose variety is not specified does not enable the olfactory sign claimed to be identified with clarity and precision. As regards the combination of the description in words and the image, the Board of Appeal considered that, since the two elements are not valid graphic representations, neither can their combination be regarded as a permissible representation.In that respect, the Court of First Instance notes, first of all, that it follows from the case-law that a combination of methods of representation not capable, in themselves, of satisfying the requirements of graphic representation is not able to satisfy those requirements and that at least one of the elements in the representation must satisfy all the requirements (Sieckmann, paragraph 72, and Libertel, paragraph 36). Consequently, since it has been found that the description in words in question and the image of a ripe strawberry, do not satisfy the conditions required of graphic representation, it must be held that their combination does not constitute a valid graphic representation. Furthermore, contrary to what the applicant claims, the image adds no additional information in relation to the description in words. Indeed, the information purportedly added, that is, the state of ripeness in which a strawberry emits the smell in question, is already contained in the description given, since that description states that it is the smell of "ripe" strawberries. Thus, since the two elements in the representation convey the same information, their combination cannot amount to more than the sum of the two parts and cannot overcome the criticisms raised against each of them individually. It results from all the foregoing that the Board of Appeal correctly found that the olfactory sign in question had not been represented graphically for the purpose of Article 4 of Regulation No 40/94, as interpreted by the case-law. Therefore the olfactive trademark application has been rejected.