By now, many of the so-called unconventional trademarks are a fact. Shapes and colours have already been widely acknowledged as trademarks by both IPOs and Courts, and only scents seem to be missing (never mind the flavours for now). Well, with the implementation of the new European trademark Regulation, it seems it might be just about time to see some changes in this regard.
The interests at stake around olfactory trademarks are enormous. Companies, in fact, have long sniffed out the opportunity to exploit olfactory memory – as correctly noted by the European Court of Justice, the most reliable memory that humans possess – to gain the upper hand in future commercial confrontations by mean of the “Proust effect”. A scent, a perfume or even a smell, in fact, immediately trigger memories and recall past experiences that can be then positively used to create actual “sensory advertisings”. Trademarking a scent would then entail that no other company will be allowed to take advantage of it.
Before reaching this target though, there is a hurdle and not an easy one (at least in Europe). Indeed, the EUIPO, according to its database, has accepted only a single registration for an olfactory trademark as yet, whereas the ECJ case law has only provided a not-to-do list, which in turn points out what a graphical representation should be like and what document submissions are required in order to obtain its final say-so without providing though any further guidance on how to meet those requirements in practice.
As a matter of fact, national IPOs have already admitted the possibility to register olfactory trademarks. For instance, the UKIPO has welcomed the first olfactory trademark as far back as 2000, but, the moment the ECJ issued its landmark decision in Sieckmann, it immediately followed suit rejecting any other application for such marks ever since.
The EUIPO and the ECJ based their decisions on the literal interpretation of the law, which required the applicant to represent the mark he or she sought to register in a graphic fashion (N.B. chemical formulas were not accepted) adding, as mentioned, further requirements developed through case law, which eventually narrowed the already narrow provision of the directive.
The introduction of the latest European trademark Regulation (2017/1001), however, opens a window for this type of marks as, according to the new provision, in order to be registrable a sign must be “capable of being represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. Now, if wiping out the graphic representability requirement does not openly let olfactory trademarks in, it certainly makes the “quest” for them within reach (provided that the other requirements are equally met).
In fact, once this behemoth of an obstacle has been removed (if so), the ordinary requirements/grounds of refusal come in. The mark must then be capable of distinguishing the goods or services of a single undertaking from those of another without resulting from the nature of the good itself and without being a necessary element to obtain it or giving it a substantial value. Furthermore, even so it is not clear whether the public has grown accustomed to linking a certain scent to a specific firm or product (thus affirming the very function of a scent as a mark) or if customers are still likely to perceive it as an inner characteristic or a decorative feature to that product.
So, getting an olfactory trademark is no piece of cake, but there is a possibility:
If a company sets its mind to using a scent as a trademark, a scent with little or better no connection with the products that incorporate it, and it enters the market in a spectacular fashion with heavy advertising spending, constantly and consistently using that type of scent, it might well increase its chances of passing a distinctiveness test, or, in time, it may even bypass it having effectively acquired distinctiveness through use.
Meanwhile in the US, last May Hasbro got to register the Play-Doh scent, thus joining a small community of 13 companies holding such trademarks (among others: a piña colada scented ukulele, bubble gum smelling flip flops and a toothbrush “impregnated with the scent of strawberries”) and managed to do that because in the US a sign can be registered simply as long as it is not used in a functional manner (same as in Europe: i.e. perfumes are not trademarkable) and the applicant provides substantial evidence as of the function of the scent as a mark (however this requirement is somehow embedded in distinctiveness’).
Though it is clear that what happens in the States does not necessarily have reflections across the Ocean, it is also clear that different systems often influence one another, and the latest open gambit represented by the new European Regulation might indeed be a testament to that.
By now, it is just a matter of time before olfactory trademarks find their way through either because of an overture of the European authorities or because of technological advancements (chromatography has not been accepted as a valid graphic representation by both European and national offices under the previous legal regime but might well have a shot now). Should anything else go south, in fact, it is likely that even in this department AI will eventually play a key role and that in a near future artificially-intelligent noses will provide officers and judges with reliable means to detect and tell different scents, thus finally kicking off the olfactory trademark rush.
 T-305/04 – Eden SARL v European Union Intellectual Property Office (2005).
 Perhaps the only and most renowned case of an olfactory mark that so far made it to the registration was “the smell of fresh cut grass” as applied to a product, namely tennis balls, which has been registered by Vennootschap onder Firma Senta Aromatic Marketing in 1999 (OHIM CTM n. 428870) and lapsed in 2006.
 C-273/00 – Sieckmann v Deutsches Patent- und Markenamt (2002).
 Trademark no. 2001416: trademark of a floral fragrance/smell reminiscent of roses as applied to tyres.
 The seven “Sieckmann criteria” set out that the representation of a sign must be clear, precise, easily accessible, intelligible, durable and objective. It must then be precise, relating to easily accessible sources of reference (e.g. international database such as Pantone for colours) and must obviously be consistent and do not change over time (whereas samples provided in unsuccessful previous registration attempts were particularly wanting in this regard).
 Reg. No. 4144511
 Reg. No. 4754435
 Reg No. 3332910
 USPTO, Trademark Manual of Examining Procedure (TMEP) § 1202.13