Journal of Intellectual Property Rights Vol 21, May 2016, pp 129-139 Protecting Smell Marks: Breaking Conventionality Abhijeet Kumar † † Patna High Court, 1/23, Vasudha Bhawan, Indrapuri Rd. No. 1, Patna 800 024, Bihar Received 15 October 2015; accepted 29 February 2016 In today’s era, there are examples of many Fortune 500 companies’, products and services of, which directly market their business upon different senses of its consumers, such as smell, taste, sound etc. Smell, one of such senses, has always been one of the strongest which individuals have relied upon in their day-to-day activities. Studies have shown how a particular smell can trigger one’s memory, affect one’s mood and of course make companies, like Chanel, earn millions. Traditionally, trademark has been affiliated to words, names, symbols or any other sign used for identification of goods and services provided by the manufacturer, which had restricted the provision of protection to goods and services to brand name and logo and not on the specific products. Though the arguments on this issue started in 1980’s only, it is still one of the least discussed aspects of IP in many jurisdictions. Due to the advancement of technology and development of jurisprudence, trademark offices and courts of different jurisdiction have started grating protections to a distinguishable smell/odour which can be represented graphically, in order to determine origin of goods and services. Through this paper the author has analysed the basic science of how a ‘smell’ can be distinguished from another and thus qualifies as a subject matter of protection. Further, the paper also focuses to examine the development of law in regard to protection of smell mark in various jurisdictions and few suggestions have been provided after analysis, which could be adopted by Indian TMO. Keywords: Trademarks, smell marks, community trademark, TRIPS Agreement, trade dress, sensory marks, Madrid Agreement, Paris Convention, Trademark Law Treaty Popular Notion of Trademark Any word, symbol, image or any other kind of signifier that establishes a difference between a good or service being provided by one company, brand, firm or organization from the goods and services provided by any other company, brand, firm or organization, is generally called as trademark. The TRIPS Agreement has given a similar definition for what all could be capable of constituting a trademark. The Agreement says that- “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark”. 1 The Community Trademark, which covers the whole region of European Union, defines trademark as any sign capable of being represented graphically, which can differentiate between one kind of goods and services of one undertaking from similar kind of goods and services from another undertakings. 3 Meanwhile, laws on trademark in USA trace its origin from a set of statutes which defines trademark similarly. 4 Going deeply into the origin of trademarks, it has been found that legal protection was given to the trademark holders by the courts, to protect their marks from being used by another trader at the same time. The rationale behind it was that otherwise it may lead to fraud being committed against the public. 5 In England, the Chancery Court in a case held that it would amount to deceit if a trader is deliberately using a mark which has been used by someone else prior to that trader. 6 In the late 19 th century, when the concept of passing off was brought into notion, it was for the same purpose that if a manufacturer has gained reputation by virtue of use of a particular mark, it should be protected from being used by another manufacturer. 7 The economic value attached to the marks and the holder of the marks has been a basic consideration for protection. The motivation for this protection was to prevent the injury done to consumers and producers alike by counterfeit goods. 8 Trademarks gained in importance as a link between the producer and the consumer in the seventeenth century, where the advent of mass production meant that goods were marketed nationally and the physical separation of the producer from the consumer resulted in the trademark becoming established as an asset of commercial value. 9 —————— † Email: abhijeetkumar12991@gmail.com