Community Trade Marks - Smells: Strawberry Fields Forever? Not Quite

In Case T-305/04 Eden v OHMI [2005] EUECJ T-305/04 (27 Oct 2005), the Court of First Instance dismissed Eden SARL’s claim for nullification of the First Board of Appeal’s decision in «odeur de fraise mûre». Eden had tried to register a strawberry smell for a wide range of goods in classes 3, 16, 18 and 25. The examiner threw out the application on the grounds that (1) the mark was not capable of being represented graphically within the meaning of art 4 of the CTM Regulation and was therefore covered by the ground for refusal provided for in art 7(1)(a) of the Regulation and (2) that it was devoid of any distinctive character within the meaning of art 7(1)(b) in respect of some of at least the goods claimed. The Board upheld the examiner on the first of those grounds.

Relying on the European Court’s judgment in C-273/00 Sieckmann v OHIM ECR 1-11737 where it held 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”

Eden argued that it had met that requirement by filing a verbal description of the smell together with a colour picture of a strawberry.

The CFI was unimpressed. Neither the picture nor the description was sufficiently precise if only because fragrances vary from one variety of strawberry to another. Indeed, the Court took the view that the photo added nothing to the description.

Since there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell it is hard to see how any smell can ever be registered.