According to the Danish advertising and branding expert Martin Lindström, an advertising message becomes more effective the more senses it appeals to. When the product or advertisement plays on sound, taste, smell or touch, the consumer is taken on an emotional journey, and emotional bonds between consumer, brand and product are more easily established.
Many commercial players seem to have caught on to this, and use a wide range of tools to communicate and build their brand. Imagine a shop that has its own unique smell, a toothpaste with an unmistakable taste, or a wine bottle that has a very special texture, which you will recognize just by touching the bottle.
There are almost no limits to how you can communicate your goods and services in the market, create your own and unique identity, and thus also stand out from the crowd. In practice, however, there are limits to the types of marketing elements that can currently be registered as trademarks, and which through registration can achieve protection against copying by others.
The law provides a broad definition of "trademarks"
A trademark can consist of "all kinds of signs" according to the Trademark Act, for example "words and combinations of words, including slogans, names, letters, numbers, figures and images, or the shape, equipment or packaging of a product". However, this list is not complete, and thus does not preclude the possibility of applying for, for example, a taste or a smell as a trademark.
Not many people have succeeded in obtaining exclusive rights to trademarks consisting of smell, taste or touch. But there aren't that many who have tried either. From the time the first Trademark Act came into being in 1910 until 1 March 2023, there has been a requirement that the trademark must be able to be "represented graphically". This has created an additional obstacle.
With the amendment to the law on 1 March 2023, the requirement for "graphic reproduction" was removed. The Trade Marks Act now requires that the mark must be able to be reproduced in such a way in the trade mark register that it is "clear and obvious" to the public and the authorities what the mark encompasses. As we shall see below, there are still significant challenges when it comes to how unorthodox, sensory characteristics, such as smell, taste and sense of touch, should be able to be reproduced in the trademark register in a clear and distinct way.
In addition to the requirement for how the mark must be reproduced in the register, you must be aware that you can only obtain an exclusive right to trademarks that have a distinctive character. It would of course be unfair if one jam producer were to get exclusive rights to the taste of raspberry. The trademark must enable the customer to understand who is behind the product, and not just be descriptive.
Smell and taste
Smell is a powerful sense, which can easily set other emotions in motion. Some examples of the use of smell to promote sales are the clothing store Abercrombie & Fitch's perfumed clothing stores, wet wipes that smell of lemon, and Mitsubishi, which has its own developed smell of new cars and leather.
Although smell can be an effective means of influencing consumers, you cannot count on getting any trademark rights to the smell of fragrant clothes or of leather seats in a car. And all manufacturers of wet wipes must be able to perfume the wipes with the smell of lemon. It is only when the smell has a special and unexpected relationship to the product that it can be perceived as a distinctive trademark.
Even if you have a smell or a taste that is distinctive for specific goods, it is however very difficult or impossible today to get this registered as a trademark. As of today, there are also no registered smell or taste brands in Norway.
The reason why it is challenging to register a smell/taste mark is due to the above-mentioned requirement that the mark must be able to be reproduced in a clear and distinct way in the trade mark register, so that the public and the authorities understand exactly which smell or taste you are protecting.
The Sieckmann judgment before the European Court of Justice concerned the question of whether it was possible to register the smell of cinnamon for a number of services, such as marketing and teaching services. Here, the court came to the conclusion that neither the submission of a chemical formula, a word description of the smell, an odor test, or a combination of these, will be sufficient. The reason is, among other things, that a word description or a formula will not reproduce the smell precisely enough, and a physical smell test will be able to change over time.
The challenges associated with registering smell and taste marks are mainly due to the fact that we currently do not have the technology to satisfactorily reproduce such marks in the trade mark register. However, the Trade Marks Act's requirements for reproduction are technology-neutral, and if in the future technology were to be obtained that enables this, one should not ignore the fact that more companies will register flavors or smells as trademarks.
Touch
YouTube is full of videos about so-called "unwrapping" or "unboxing". They show not only what the product inside the packaging looks like, but also the feeling it gives when unpacking a new product. You see how a brand new mobile phone lies in your hand or how a toy is unfolded from its plastic packaging. The magic of this phenomenon is the childlike anticipation we all feel when unwrapping something new.
The sense of touch can also have something to say about how we perceive the quality of a product. For example, you will often notice the difference between a cheap and an expensive kitchen roll, based on how the paper feels in the hand. And a bottle of spirits might feel more exclusive if the bottle is heavier than usual and has tangible engravings in the glass.
In the US, a touch mark for velor texture on a wine bottle is registered. It is possible to register a touch mark (also called a "feel mark") in Norway as well, but this is a type of trademark that we very rarely see in practice. This probably has a connection with the fact that it is difficult to reproduce these marks in the trade mark register in a sufficiently clear and distinct manner.
Something more often searched for than touch marks are marks showing packaging or design. This type of mark may have a side to touch marks. The Globalkniven, with its dotted handle, attempted to be registered as a figurative mark in the EU without success. The ECJ stated that the dotted handle was designed in this way to achieve a technical result; namely a good grip (T-331/10 and T-416/10).
A greater potential for smell, taste and touch marks in the future?
As previously mentioned, it is very difficult to register smell and taste marks, because digital formats for this do not exist today, and they cannot therefore be reproduced in the trade mark register in a clear and distinct way.
Many people, however, refer to "the internet of senses" as the next big step in digitalisation, where it is envisaged that the digital and physical worlds will merge into one another to an even greater extent. The idea is that all five senses should be able to be used in our everyday life on the internet, not just sight and hearing, as is the case today. In this connection, work is being done, among other things, to create odor-generating devices that make it possible to send artificially produced odors over the internet. In the tech world, work is also being done on a large scale with the development of so-called "haptic" clothing, which are suits that will simulate the feeling of physical touch on the body.
It will be interesting to see what kind of trademarks will be able to be registered in the future, if the technology allows for more types of brands. Maybe Apple will register the smell of apple? Or will beverage giants such as Coca cola or Pepsi attempt to trademark the taste of a drink?
Do you have questions about non-traditional sensual brands?
Consult
Magnus Haugo, mho@patentsyret.no
Preben Valklev Vikøyr, pvv@patentsyret.no
