The new EU definition of Trade Mark: who let the smells out?
by Giancarlo Moretti
The new EU trade mark legislation has been offering a lot of grounds of discussion. Sometimes even inspired by an old piece of music.
The first surprise of the reform package leaps immediately out. Indeed, the first sensitive difference is provided by the new definition of trade mark, embedded in article 3 and article 4 respectively of the new Trade Mark Directive and of the amended EU Trade Mark Regulation. They read as follows:
A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the register 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.
The new definition of the trade mark notably differs from the one provided internationally by TRIPS and by the former legislation.
The substitution of the reference to graphic representation in letter b) is, without any doubt, one of the great novelties of the new legislation. Namely, it seems to be. Indeed, in its milestone decision Sieckman, the Court of Justice already specified that, in order to register a trade mark, a sign does not need to be visually perceived as long as its ‘representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective’ by redifining, to a certain extent, the classical canons of graphic rapresentation. Under this term, it may be argued that the new definition just reflects the criteria already elaborated by the Court of Justice, which has provided clear guidelines as for defining a sign and registrability of unconventional marks.
The register representation, in any case, constitutes a relevant and innovative novelty in the new Trade Mark system. Nonetheless, one of the most debated issues, such as the registration of smell marks, remains still open. Indeed, according to the OHIM Guidelines and to case-law, smell marks cannot be registered as their representation is not clear, precise and it is not objective. As registration of fragrance should be represented only via a chemical formula or by the filing of samples, that, at the moment, is very unlikely to satisfy the requirements of clarity and precision stipulated the new provision.
Thus, it seems quite clear that currently smells are excluded from trade mark protection. Nevertheless, it might be interested to see if, in future, the European Union Intellectual Property Office (EUIPO, the new name of OHIM from next 23 March) and the Court might reconsider the registrability of smell marks and fragrances in the light of the evolution of technology and of the new trade mark provisions.
 Directive 2015/2436 of the European Parliament and the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks  OJ L 336/1.
 Regulation 2015/2424 of the European Parliament and the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)  OJ L 341/21.
 Case C-273/00 Ralf Sieckmann v Deutsches Patent- und Markenamt  ECR I-11737 at 55.
 OHIM, Guidelines for examination in the office for harmonization in the internal market (trade marks and designs) on community trade marks – Part b examination – Section 4 absolute grounds for refusal, 13-14. Available at <https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_1_2016/Part-B/04-part_b_examination_section_4_absolute_grounds_for_refusal/part_b_examination_section_4_absolute_grounds_for_refusal_en.pdf> accessed on 24 February 2016. This guidelines are updated as to 1 February 2016.
 Sieckmann (n 3) at 69-71.
Giancarlo Moretti, LL.M (QMUL), QMJIP Associate Editor