Following our previous analysis of the modifications generated by the transposition project of the “Trademark Package” in French law, we focus our analysis on the elimination of the graphical representation requirement.
Indeed, the enactment of the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 marks the disappearance at the European level of the graphical representability requirement, which was essential for the registration of a trademark. It is now sufficient that the sign is distinctive and represented “on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”(Article 3). This amendment is taken into account by the draft ordinances of the “Trademark reform package” with a new article L. 711-1 of the French Intellectual Property Code, which would make it possible to register olfactory or taste marks.
The graphic representability, a barrier to the recognition of olfactory and gustatory marks
The graphical representation requirement has not prevented the protection of three-dimensional or sound trademarks, but it has proved to be an insurmountable obstacle for the registration of olfactory or taste trademarks.
However, the registrars were not reluctant to grant such protection, as shown by a successful application for a grass smell (OHIM, 11 February 1999, R. 156/1998-2) or a beer smell (Unicorn Products, GB 2000234). If the requests were not always successful, the possibility of protection had at least the merit of existing. However, the European Court of Justice (ECJ) had put an end to this development in its Sieckman judgment (ECJ, 12 December 2002, Case C- 273/00) by stating that “in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.” Fulfilling the requirement of graphical representation required therefore the presence of “figures, lines or characters”, which was possible for sound (graphic) and three-dimensional (figure) trademarks, but was impossible for olfactory and gustatory trademarks.
An abolition to European case-law
By removing this requirement, the new article L. 711-1 would implement a welcome change. Designs, patents, and copyright, were inadequate to protect these olfactory and gustatory signs. Bringing an action for infringement was therefore not possible, and only the action for unfair competition remained. However, it was too restrictive.
From now on, article L. 711-1 will require that the sign must be represented “in such a way as to enable any person to determine precisely and clearly the object of protection”. The object of protection, that is, the sign for which registration as a trademark is sought, must first and foremost be identifiable.
The main difficulty in registering an olfactory or gustatory trademark will therefore be to find a sufficiently intelligible, durable, clear and precise way to express the smell or the taste one wishes to protect. This translation will be able to make it possible to determine what the sign is and which special feature makes it distinctive. For example, for a rose smell, it will have to be possible to distinguish the smell of a certain type of rose and not all rose smells. The sign will correspond to that particular smell and its representation must make it possible to identify and recognize it. The applicant will also be able to provide a chemical formula. We will thus identify the smell thanks to this formula, which can be represented graphically. Indeed, if the limits of the sign are not clearly determined, it will be then impossible to verify that it satisfies the other criteria of the mark, distinctiveness in particular.
These new representations are now possible to implement thanks to technical means offering sufficient guarantees. Thus, a chemical formula, a description in written words, an odour sample, or a combination of those elements can now satisfy the graphical representation requirement.
Effects of the removal of the graphical representation requirement
Removing the requirement for graphical representation requirement leads up to adapting to new technologies, to the development of innovation and to competitiveness between companies. Nevertheless, the evolution of trademark law in this area is only at its beginning and raises many questions. For instance, the INPI (as other European offices), is not used to having to examine chemical formulas or samples, and it will have to adapt to these new means of representation and their practical consequences. In addition, these changes will also impact in practice how counterfeiting is assessed. For example, establishing fraudulent use of a smell will be more difficult than establishing the same fraud for mark represented graphically.
Consumers make little use of their sense of smell or their taste buds to identify a brand. Therefore, once registered, an olfactory or a gustatory mark could be at great risk to be forfeited. These marks are few in number, at least for now, and thus it is likely that the competent courts will have to wait a long time before being able to assess what does or does not constitute a precise and clear representation. The recognition of these trademarks by law is welcome, but it will not necessarily lead to their widespread use.
To be continued…