Major fashion labels such as H&M, Calvin Klein and Jimmy Choo are among a list of global brands using ‘olfactive logos’ in an attempt to heighten consumer connections, increase revenue and enhance brand loyalty. While research shows that scents can be more memorable than other stimuli and therefore a clear choice for branding, there are still significant obstacles for brands to overcome before they utilise these non-traditional trademarks.

US brands, such as Abercrombie & Fitch, have been using scents for some time in an attempt to enhance the shopping experience of their consumers, along with other concepts such as scented packaging and products. With olfactive branding company 12.29, which operates between New York and Paris, pushing the case for such sensory brand signage, it appears adoption could now grow.

David Greenbaum, partner at Edwards Wildman, notes: “Some scents have indeed been registered in the US, including the scent of Plumeria blossom for sewing thread. A simple written description is used and this is quite straightforward for commonly known smells. As with colour alone, and since the Qualitex decision, a scent must have acquired distinctiveness to be registered on the Principal Register.”

However, adoption is not without its obstacles, both in terms of registration and effective use. On the former, Greenbaum explains that functionality is a key issue in trademarking a scent in the US: “When people hear about scents being protected under trademark law, they immediately get excited about the possibility of protecting perfume scents, but this is not possible based on the current interpretation of what is functional. The idea is for a perfume to impart a pleasant odour. This arguably makes a perfume scent functional, as would be flavour for food.”

He adds: “The sense of smell has a powerful effect on memory. This makes it a clear choice for branding, which relies on strong impressions and source identification. However, some other practical problems include how to administer scents in the context of a brand or as a brand itself, and how to use a scent in a way that is not functional.”

Meanwhile, in Europe the olfactory mark is still struggling with the requirement of graphic representability. Even if the distinctiveness of scents is generally no obstacle, it is the requirement of graphic representability which hinders scents from being registered as olfactory marks at the Office for Harmonisation in the Internal Market (OHIM). Claudia Gatzert of Meissner Bolte says: “As far as we know, there are no olfactory marks registered at the OHIM at present; the olfactory mark ‘The smell of fresh cut grass’ registered in the year 2000 by OHIM has expired and no further olfactory marks seems to have been registered since then. German literature about the protection of scents primarily deals with patent and utility model protection, as well as copyright and unfair competition law, and does not seriously take into consideration the possibility of registered olfactory marks.”

Gatzert believes that in light of the developments in the fashion industry, the discussion about the graphical representation of olfactory marks may need to be renewed. However, she adds: “It seems that, in spite of the increasing interest in olfactory signs, the number of olfactory trademark applications at the German Patent and Trademark Office and the OHIM has not risen in recent years. Additionally, it seems that at present no discussion about the registration of olfactory marks is on-going in Germany/Europe and I fear that the requirements of graphic representation prescribed by case law will not be changed in the foreseeable future.”

This may change as brand consultancies push the benefits of smell and as manufacturers and marketers seek new ways to distinguish their products from that of their competitors, (particularly if plans to broaden the definition of ‘registrable signs’ to no longer include graphic representation as a condition are eventually formalised). But counsel should be wary of the difficulty and expense of protecting scent marks, and bear in mind that the effectiveness of protection and enforcement of these prospective marks will vary depending upon jurisdiction.

This blog was first published in World Trademark Review on 7 January 2014