In November last year, the CGPDTM granted India’s first olfactory mark for rose-like smelling tyres. Adding to the discussion on the blog (here and here), Gaurav Dhaiya writes in favor of the order, inter alia explaining how the 7-dimensional vector representation qualifies as a graphical representation. Gaurav Dahiya is a PhD candidate at NLSIU, Bengaluru, pursuing his research in intellectual property law.
In Defense of Sumitomo, and What It Means for India
By Gaurav Dahiya
The tyre manufacturer Sumitomo recently received a trade mark for its application no. 5860303 titled “FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES”. Tanishka and Shama have already presented their relevant thoughts on this blog. While there have been criticisms regarding the order by the Controller General in this regard, through this piece, I plan to take a different approach and present an argument in favor of the decision. At the same time, I identify specific areas where the Controller General could have provided more reasoning for its decision.
This blog piece will be divided into three main sections. In the first section, I will look at how the 7-dimensional vector representation of the rose fragrance by the IIIT Allahabad researchers does qualify as a graphical representation as required by Sec 2(1)(zb)(i) of the Trade Marks Act, and follows in the practice of representing scents using vectors which is increasingly gaining acceptance in the scientific world. In the second section, I will briefly present my views on the other major sticking point – whether Sumitomo’s tyres with rose fragrance had acquired distinctiveness. In the final section, I will touch upon the application of comparative approaches to intellectual property law, especially in instances where the standards adopted by different jurisdictions do not align perfectly, and the role Indian authorities can play in such cases. The hope is that the reader understands the need for a normative framework in modern times for trade mark evaluation and the role India can play in developing it.
The Eye of the Storm: Sumitomo’s 7-D Graphical Representation
Sumitomo, with the help of researchers at IIIT Allahabad, employed a novel strategy of using 7-dimensional vector representation of their fragrance to satisfy the “graphical representation” requirement. For this requirement, the Sieckmann criteria become important. The Sieckmann criteria refer to a set of seven legal requirements established by the European Court of Justice (ECJ). These criteria (clear, precise, self-contained, easily accessible, intelligible, durable and objective) were developed to determine whether a “non-traditional” trademark (like a smell, sound, or color) can be registered when the law requires it to be graphically represented. While the oft-cited Sieckmann criteria by the European Court of Justice (CJEU) made this practically-impossible for registration of smell marks in the EU historically, recent amendments have drastically relaxed this provision in EU law. The US law does not require graphical representation as such.
From a scientific perspective, numerous attempts have been made to represent smells/scents graphically. One of these methods is called Electronic Nose, which represents smells as multi-dimensional vectors to detect ripeness/spoilage of food products (examples here, here and here). Google is building its own AI-based model which creates a map containing embeddings in a high-dimensional space, which it describes as “a representation of each molecule as a fixed-length vector describing that molecule in terms of its odor, much as the RGB value of a visual stimulus describes its color”.
The use of the 7 fundamental smells (namely floral, fruity, woody, nutty, pungent, sweet, and minty) by the IIIT researchers is perhaps a modern technical adaptation of early odor classification systems. Carl Linnaeus originally proposed seven categories of smell (Aromatic, Fragrant, Ambrosial, Alliaceous, Hircine, Foul, and Nauseous) and John Amoore hypothesized that there are “primary odors” based on the shape of molecules fitting into receptors, while identifying 7 primaries: ethereal, camphoraceous, musky, floral, pepperminty, pungent, and putrid (for more information on such olfactory representation methods over the years, this paper by Richard Doty provides a nice compilation here).
Looking back at Sieckmann, the primary hurdle for smells has always been that words (e.g., “smells like a rose” in the Sieckmann case) are too subjective, and chemical formulas describe the substance, not the odor. In my view, the 7-D vector meets the requirement for objectivity because it moves away from human linguistic descriptors and toward sensory data. By using standardized sensory analysis (similar to ISO standards for food testing), the vector provides a “standardized language” that a trademark office can use to compare two marks side-by-side, much like they compare two logos for visual similarity. In this way, the ‘matrix’ representation approach for smell marks parallels the spectrogram approach for sound marks. The MGM ‘Lion Roar’ (US Reg. 1,395,550) overcame the subjectivity of verbal descriptions through the use of spectrograms, which represent sound via objective data points (frequency and time).
The above discussion indicates that while there is no consensus on how fragrances can be represented graphically, there have been numerous attempts at it, some even commercialized. Even then, the effort by the IIIT researchers is commendable for demonstrating a unique 7-D vector representation method, which can serve as a yardstick for any future application for olfactory marks (still waiting on the paper by the researchers explaining their methodology).
Has the Mark Acquired Distinctiveness? Really?
Commentators have already noted that scent marks are much more common in the US than the EU, primarily because of the absence of a graphical representation requirement. For a smell mark to be registered, however, it must show the mark has acquired distinctiveness over its prolonged use in the market and the smell can’t be the primary purpose of the product (non-functionality). In trademark law, distinctiveness is the capacity of a mark to function as a “badge of origin,” allowing consumers to identify the source of a product and distinguish it from those of competitors. Under the Indian Trade Marks Act, 1999, this concept can be located in Section 9(1)(a) (for distinctiveness) and the proviso to Section 9(1) (acquired distinctiveness).
While Shama has stated that reliance on US jurisprudence might be misplaced here, it is worth noting that the applicant Sumitomo had in fact submitted significant arguments alleging the distinctiveness of its mark. Sumitomo submitted that the rose fragrance was “integral component of their business strategy and product development since the year 1995” (para 5 of the Order), and relied on its 1996 UK successful registration of the same mark. At the same time, the Controller General has not engaged with these arguments and instead relied on the inherent distinctiveness of a rose fragrance.
Role of Comparative Research in IP law, and India’s Role
Looking at the proceedings from a bird’s eye perspective, it appears that India has chosen the path of creating a new legal standard (which is unusual in intellectual property), rather than following the US or EU approach. While the EU approach is to strive for legal certainty (the Sieckmann requirement for a “clear, precise, self-contained” representation), the US opted for a consumer-centric approach (if the market recognizes the mark as distinctive, and it is non-functional, it passes the test). Here, the non-functionality requirement ensures that trademark law doesn’t grant a permanent monopoly over useful product features that instead, should be governed by patent law. The Indian approach in contrast seems to be technocratic, or to be driven by science. Which brings into discussion one of the age-old questions in legal analysis – the role of the comparative approach, or rather how to employ it.
In her 2021 article, Ida Petretta argues for a move beyond “calculative” comparison (mere checking of boxes) and toward a “meditative” approach that considers the actual practice of law. As per Ida, legal comparison functions to bridge the gap created by a ‘new situation of equal mischief’. In the realm of non-conventional trademarks, the Indian Registry’s adoption of scientific 7D mapping is not merely a technical divergence from EU’s Sieckmann criteria, but a functional evolution designed to resolve the same underlying problem: the legal ‘mischief’ of an invisible and indescribable commercial sign. A meditative comparison, as Ida describes in her article, would reveal that India’s 7-D vector model attempts to synthesize both the US ‘market-based’ standard and the EU ‘register-centric’ standard: it seeks the precision of the EU register while embracing the technological reality of the modern market.
By accepting the rose-scented tyre mark through scientific 7D mapping, India has transitioned from a passive follower of the Sieckmann criteria to a proactive normative leader, effectively demonstrating how technological integration can resolve long-standing legal deadlocks in sensory trademark law. This case asserts that emerging economies can set high-tech standards that influence global commerce, rather than merely adjusting their domestic laws to match Western treaties.
To Conclude
The Sumitomo decision marks a stunning turning point in Indian IP jurisprudence. Only time will tell whether any oppositions will be filed and whether it will survive those attacks. And while the decision could definitely be reasoned better, a novel normative framework was approved in the process of breaking a long-standing deadlock. At the same time, there are concerns regarding consumer perception of scent marks backed by matrix representations, as well as administrative feasibility for the Registry. Could this decision spark more such olfactory/other non-conventional marks to be submitted in the coming years? Any legal researcher would agree with Marlo Standfield (from The Wire) when he said:
