Olfactory Trademarks: a Hard-to-Reach Protection, the German Case

*Image generated by DALL E 3 Microsoft Version

In the realm of intellectual property law, the protection of olfactory trademarks presents a unique challenge. Unlike traditional trademarks, which rely on visual representation, olfactory trademarks are based on scents, making them subjective and difficult to standardize. This complexity is vividly illustrated in the case of the German Patent Court’s decision in 29 W (pat) 515/21.


On September 3, 2020, a groundbreaking application was filed for a German trademark in class 28, covering “sports articles.” The application was unusual; it sought to register an “olfactory mark,” described as “the scent of honey from the nectar of common heather flowers (Calluna Vulgaris) on golf balls.” This application challenged the conventional boundaries of trademark law, venturing into the relatively uncharted territory of olfactory marks.


The German Patent and Trademark Office, however, found the application lacking. They rejected it on the grounds that the scent was not represented in a manner allowing authorities to determine its scope of protection precisely. This rejection brought to light the pivotal requirement of representability in trademark law, an aspect often taken for granted in more traditional applications.


The applicant’s appeal brought forth further insights. The German Patent Court maintained that for a mark to be registrable, it must meet stringent criteria: it should be clear, precise, complete, accessible, intelligible, durable, and objective. These criteria, known as Siekmann’s criteria, are now a cornerstone of the EU Trademark Regulation (EUTMR), specifically Article 3, paragraph 1. The applicant’s description, while creative, failed to meet these stringent standards.


Moreover, the Court pointed out that descriptors like “bitter,” “strong,” and “aromatic” are inherently subjective and do not provide the objective clarity required by law. The Court’s decision serves as a vital reference point for future applicants, illustrating the nuanced requirements of non-traditional trademark registrations.


Interestingly, the Court also discussed various unsuccessful methods of representing olfactory marks, such as chemical formulas and color codes used in the perfume industry. These methods, while innovative, fell short of the legal standards for clarity and objectivity.


This case exemplifies the gap between current legal frameworks and technological advancements. The EU’s trademark reforms theoretically allow for the protection of olfactory marks, yet the technology to represent scents precisely and objectively is still evolving. This scenario presents an intriguing paradox where the law, typically seen as reactive, is ahead of technological capabilities.


The future, however, holds promise. With digital scent technology progressing rapidly, there is hope that reliable odor reproduction could soon make olfactory trademarks a practical reality. This advancement would mark a significant leap in intellectual property law, opening new frontiers for trademark protection.


At Dreyfus Lawfirm we stay at the forefront of these developments, ensuring our clients are well-equipped to navigate the complex landscape of trademark law, whether traditional or cutting-edge. In a world where legal precedents and technological innovations constantly redefine the boundaries, our expertise becomes your asset in safeguarding your intellectual property rights.