Sieckmann v. Deutsches Patent-und Markenamt

Sieckmann v. Deutsches Patent-und Markenamt

Case C-273/00, 2003 E.T.M.R. 37

Brief Facts:

The Applicant intended to register an olfactory/smell mark, before the German Patent and Trade Marks Office, in Classes 35, 41 and 42 for which the Applicant provided the following description:

“Trade mark protection is sought for the olfactory mark deposited with the Deutsches Patent- und Markenamt of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt.

C6H5-CH = CHCOOCH3″

Subsequently, the Applicant made the following addendum to the description:

“’The trade mark applicant hereby declares his consent to an inspection of the files relating to the deposited olfactory mark “methyl cinnamate” pursuant to Paragraph 62(1) of the Markengesetz and Paragraph 48(2) of the Markenverordnung (Trade Mark Regulation).’”

The Applicant also submitted a sample of the smell in a container snd submitted that the scent was usually described as “balsamically fruity with a slight hint of cinnamon”.

The German Patent and Trade Marks Office refused the application on account of graphical representation and non-distinctiveness. In appeal, the Federal Patents Court, Germany was of the view that:

• In theory, odours may be capable of being accepted in trade as an Independent means of identifying an undertaking.
• Mark in question would be capable of distinguishing the services and would not be regarded as purely descriptive of the characteristics of services.
• However, it is doubtful whether the olfactory mark such as that in issue can satisfy the test of graphic representability which is essential even if the smell has become accepted in trade as belonging to a specific undertaking.

The, Federal Patents Court, Germany stayed the proceedings and referred two questions for determination to European Court of Justice. The same are reproduced herein below:

“(1) Is Article 2 of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) to be interpreted as meaning that the expression “signs capable of being represented graphically” covers only those signs which can be reproduced directly in their visible form or is it also to be construed as meaning signs — such as odours or sounds — which cannot be perceived visually per se but can be reproduced indirectly using certain aids?

(2) If the first question is answered in terms of a broad interpretation, are the requirements of graphic representability set out in Article 2 satisfied where an odour is reproduced:

(a) by a chemical formula; (b) by a description (to be published); (c) by means of a deposit; or

(d) by a combination of the abovementioned surrogate reproductions?”

The European Court of Justice answered the first question by stating that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The reasoning of the European Court of Justice to arrive at such a finding can be summarized as under:

• That Article 2 of the Directive does not expressly exclude smell marks and thus Article 2 has to be interpreted to include a trade mark which is not capable of being perceived visually, but can be represented graphically.
• Graphic representability determines the precise subject of protection afforded to registered proprietor and thus enables the competent authorities to fulfil their obligations to examination of marks while further ensuring that the competitors or other members of the public have knowledge of rights of the registered proprietor without subjectivity.

The European Court of Justice answered the second question 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.

The reasoning of the European Court of Justice to arrive at such a finding can be summarized as under:

• Only few people will be able to recognize the odour by way of formulae.
• A formula does not represent the odour but the substance and is not sufficiently clear and precise.
• The description provided is not sufficiently clear, precise and objective.
• Sample of odour does not constitute graphical representation and is not sufficiently stable or durable.
• If the above three constituents, by themselves cannot satisfy graphic representability, a combination of the same will not be able to satisfy requirement of clarity and precision.