Venootschap onder Firma Senta Aromatic Marketing’s Application

Venootschap onder Firma Senta Aromatic marketing’s Application;

[1999] E.T.M.R. 429 (Eur. Comm. Trade marks Office, Second Board of Appeal)

Brief Facts:

The Applicant applied for registration of a smell mark with the description ‘THE SMELL OF FRESH CUT GRASS’ for tennis balls. The Examiner was of the view that the words ‘the smell of fresh cut grass’ is not a graphical representation of the smell mark itself and the mark as applied for and is in fact a description of the mark. The Examiner refused the registration by holding:

“`In my view, the mark has not been represented graphically. An olfactory mark has been claimed and a verbal description of the mark has been given. But where is the mark itself? What has been given appears to be a graphic representation of a report of what the mark is, and not the mark itself. Indeed, being a verbal report of what the mark is, it is not clear where the scope of protection begins and ends. In what way for example does the “smell of fresh cut grass” differ from fresh grass or just cut grass? Would the scope include cover for the words themselves?”

The Second Board of Appeal overturned the Examiner’s decision and observed:

• It is first necessary to consider the purpose of the ‘graphical representation’ requirement contained in Article of Community Trade Marks Regulation.
• The purpose is to enable proper examination, search and oppositions by the office or potential opponents, as the case may be.
• There are no rules laid down in Regulation concerning representation of olfactory/smell marks.
• The question to be decided is whether or not the description in the application gives enough information to those reading them to walk away with an immediate and unambiguous idea of what the mark is when used in connection with tennis balls.
• The smell of freshly cut grass is a distinct smell which everyone immediately recognises from experience.
• For many, the scent or fragrance of freshly cut grass reminds them of spring, or summer, manicured lawns or playing fields, or other such pleasant experiences.
• Description provided for the olfactory mark sought to be registered for tennis balls is appropriate and complies with the graphical representation.