2022 Odour Trademark Cases and Registration Specifications (Part 2) Taiwan, Asia and New Zealand and Australia

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In the previous article, we introduced the concept and application instructions of scent trademarks, and shared the examination standards for scent trademarks in Europe and the United States. Compared with Europe and the United States, there are also many countries in Asia and Oceania that open the registration of smell trademarks and various non-traditional trademarks. This article will analyze the legal norms of smell trademarks in New Zealand, Australia, Asian countries and Taiwan with practical cases.

1. Smell trademark lazy bag

This paragraph mainly summarizes the requirements for registering odor trademarks. For more details, please refer to the previous description:2022 Smell Trademark Registration Specifications (Part 1) The United States, Canada, the European Union and the United Kingdom.

(1) The concept of smell trademark

Studies have shown that the sense of smell is the most direct sensory stimulation of the memory center. If the smell is used as the symbol of the brand, the brand image can be deeply imprinted in the minds of consumers. Therefore, the smell trademark has become a field for many companies to attack.

However, odors are difficult to be preserved permanently, and they cannot always be conveyed to the public through text descriptions very accurately, leading to discussions of positive and negative opinions on trademark protection of odor trademarks. By 2022, odor trademarks will still be an emerging trademark type. state, not all countries allow registration of scent trademarks.

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(2) How to apply for an odor trademark?

Although different countries have different examination standards for smell trademarks, they basically do not deviate from the following four key points.

1. Smell must have innate or acquired recognition

Distinctiveness is an essential element of a legitimate trademark. Whether the smell is inherently unique enough, people can immediately recognize the relationship between the smell and the brand after smelling it, or after long-term and extensive use in commodities and stores, people are accustomed to know that it is the unique smell of the brand, All are the performance of the "identifiability" of the odor trademark.

2. The smell must be non-functional

It means that the smell has no other purpose other than to identify the brand, so the smell of perfume and fragrance is not suitable for registration of smell trademark.

3. Pay attention to the Graphical Representation specification

Graphical Representation means that a logo can be visually presented to people in the form of images, lines, words, etc. Many countries require that trademarks must be represented by pictures and texts, which makes it easy for scent trademarks to be limited by this provision. Most countries that allow the registration of scent trademarks relax the requirement of textual description to meet the requirements of graphic and text representation.

4. Prepare a word description in advance

The difference between the word description and the graphic representation is that the graphic representation directly presents the logo itself, while the text description describes and describes the logo as much as possible from the side, and explains which product or product the logo applies to. Serve. Some countries allow odor trademarks to be represented by text descriptions instead of pictures and texts.


2. Regulation of smell trademarks in New Zealand and Australia

Both Australia and New Zealand have expressly allowed the registration of scent trademarks, especially Australia is one of the few countries that has independent and clear legal regulations on scent trademarks.

(one)Australia

Australia excepttrademark law"Explicitly recognizes smell as an element of trademark signs, and IP Australia alsoManual of Trademark Practice and Procedure" further stipulates the application method and specific examination criteria for smell trademarks. As of 2022, Australia has 2 successfully registered scent trademarks.


Australia's special specifications for odor trademarks are as follows:

1. Application conditions

An application for an odor trademark in Australia must also include a graphic representation of the odor, but unlike the European Union, Australia expressly allows text descriptions to achieve this requirement, such as the description of "pineapple smell".

Australia's examination standards for the graphic representation of smell trademarks are as follows:

  • The graphic representation should be as clear as possible. The more room for people's imagination, the lower the clarity of the presentation, and the more difficult it is for the scent trademark to be recognized.
  • Graphical and textual representations must be understandable by ordinary people, and cannot be used as technical analysis data, such as infrared spectrum analysis results, molecular distillation results, and electronic nose odor detection results.
  • Although it is not necessary to attach an odor sample to the application, the sample may need to be used during the testing phase.
  • The applicant must be able to accurately describe the connotation of the smell trademark, including what kind of smell and what kind of goods it is applied to, so as to determine the scope of the registered right of the trademark.

2.Rejection standard

To trademark a scent, the scent must be recognizable and not functional. Australia'sManual of Trademark Practice and Procedure》Specifically lists the following three non-identifiable odor types:

  • Ontology natural odor
  • landscaping scent
  • Commonly used odor in the industry

(1)natural smell
Refers to the raw material odor emitted by the commodity itself, such as perfume, essential oil, logs, curry spices, medicinal herbs, etc. What the natural smell of ontology is connected to is the commodity, not the supplier of the commodity, so it has no innate identification.

(2)landscaping scent
Most of the odors used for beautification are added to the commodity, the purpose is to cover up and modify the main odor of the commodity, such as lemon-scented bleach. The smell for beautification has the function of "beautifying", and it is not added to distinguish the source of the product, and consumers usually do not distinguish the product manufacturer based on this kind of smell, so it is not recognizable.

(3)Commonly used odor in the industry
Although this type of odor is not used to cover up odors, it is still aimed at enhancing the attractiveness of products, and has been widely used in similar products for a long time, such as shampoo with herbal aroma, and disinfectant with pine or cedar aroma.

Because the application is too common and does not distinguish between brands, it is difficult for consumers to distinguish the source of the product through the smell, so the common smell of the same industry cannot be used as a trademark.

(two)new zealand

New Zealand'strademark law"Since 2005, the registration of scent trademarks has been expressly opened, but it seems that no special application specification has been made. Therefore, the scent trademark in New Zealand should basically apply the general specifications to apply for registration.

New Zealand still requires that trademarks must be represented in pictures and texts, and the Intellectual Property Office of New Zealand (IPONZ) has publishedPractical policy", specifically stipulates the graphic representation methods applicable to non-traditional trademarks such as shape, sound, and motion, but does not specify how the smell trademark should be presented, but in practice it is accepted to be presented in text descriptions.

General rules for trademark applications in New Zealand:

  • Must be able to be represented graphically.
  • It must be possible to distinguish the source of goods and services.

3. Regulations on odor trademarks in Asian countries

Among Asian countries, there are more active ones in the opening of scent trademarks, including South Korea, Brunei and Malaysia.

(one)South Korea

In 2012, South Korea cooperated with the "Korea-US Free Trade Agreement" to enter into force, and amended the "Korea-US Free Trade Agreement".trademark law"Explicitly recognizes the smell trademark, but on the condition that the smell can be visually expressed in pictures and texts, and then South Korea revised the law again in 2016 to remove the requirement for visual expression.

South Korea's Special Regulations for Odor Labels:

  • Trademarks must be recognizable.
  • The trademark must not be a necessary function of the product or its packaging.

Case Studies

Regarding the determination of whether an odor is acquired or not, the Korean court adopts a strict interpretation. For this, please refer to the judgment of the Korean court in the Jiaolian case.

Japan's Jiaolian Company applied for the scent trademark of "Chinese herbal scent applied to physiological products" for its Guiairang physiological products, and proposed that the annual sales of the product were tens of billion won, and the annual advertising and marketing expenditure of the product was nearly 870 million won. , the reports and evaluations of major news media and newspapers and magazines as evidence, claiming that the smell has acquired identification, but it was denied by the Korean court.

The Korean court believes that "acquired identification" is equivalent to granting exclusive rights to the exception of signs that should not be used exclusively. Therefore, it is necessary to examine the relationship between goods and signs, and make an objective judgment based on the actual business situation. The applicable laws and regulations also need to be strictly interpreted. It is directly determined based on the sales of goods, certain publicity or registered trademarks abroad. In the Jiaolian case, consumers usually think that the smell has the function of eliminating odor, and they will think that the brand of the product is Guiairang, but they will not believe that the smell itself is a brand mark, thus denying the existence of acquired recognition.

(2) Brunei

Brunei "trademark law》 does not expressly recognize the smell trademark, but the 2017 Trademark Law Amendment Order has removed the requirement that trademarks need to be visually visible, opening the registration channel for smell trademarks and other non-traditional trademarks. Although the current Brunei "Trademark Law" still requires that trademark applications must submit graphic representations, it does not strictly limit the way of graphic representations, nor does it exclude the presentation of smells in textual descriptions. Therefore, it is not uncommon to apply for smell trademarks in Brunei. possible.

Brunei’s general norms for trademark applications:

  • Must be able to be represented graphically.
  • It must be possible to distinguish the source of goods and services.

(three)Malaysia

In 2019, Malaysia amended thetrademark law", expressly indicating that smell can be used as a type of trademark sign, and in "Trademark Policy 2019The procedures to be followed to apply for an odor trademark are demonstrated in . Although it is also required that the trademark must be represented in pictures and texts, it is allowed to present the smell in the text description.

The special regulations for odor trademarks in Malaysia are as follows:

  • A textual description of the odor must be provided and must describe how the odor is applied to the goods or services.
  • It is permitted to propose the chemical formula or molecular composition of the odor to aid in the written description.
  • Scent trademarks are not eligible for urgent review.

(Four)India, Hong Kong and Singapore

Although India, Hong Kong and Singapore have already opened applications for non-traditional trademarks such as shape and sound, they still have reservations about smell trademarks.

This is because India, Hong Kong and Singapore have all been influenced by the opinion of the European Court of Justice Ralf Sieckmann, that the odor cannot be truly represented with the currently available technology, and that chemical formulations, text descriptions or odor samples are not acceptable to replace graphic representations, resulting in Smell is actually difficult to qualify for trademark registration.


4. Taiwan's Regulations on Smell Trademarks

Since 2012, Taiwan's "trademark law"Definition of a trademark as "any identifying mark", although the statute does not list scent as an element of a trademark, it has been expressly included in the "Standards for Examination of Non-Traditional Trademarks" for the examination of scent trademarks.

General regulations for trademarks in Taiwan:

  • Must be able to be represented graphically.
  • Graphic representations must meet the six criteria of "clear, unambiguous, complete, objective, durable and easy to understand".
  • It must be possible to distinguish the origin of the goods or services.

Taiwan's special specifications for odor trademarks:

  • The graphic representation can be described by the smell that exists in nature, or the smell with the unique name in the market.
  • The sample cannot replace the graphic representation, but can be used to supplement the text description. The sample does not need to be attached in the application stage, but may be required in the review stage.

Taiwan's examination standards for the identification of smell trademarks:

The identifiable odor shall not be the odor emitted by objects such as the commodity itself, the commodity packaging container or the articles related to the provision of services, and shall be independent of the essence or characteristics of the commodity/service, but belong to an additional special additional odor.

Taiwan's examination standards for the functionality of odor trademarks:

  • Whether the odor is essential to the use or purpose of the specified good or service.
  • Whether the smell affects the cost or quality of the good or service.
  • Whether the smell is closely related to the important influence on the competition of goods or services.

Case Studies

The representative case of odor trademark application in Taiwan should be the application of “Mint scent applied to anti-inflammatory and analgesic patch” applied by Nisshang Jiuguang Pharmaceutical Co., Ltd. for its Salonpas patch. It is a mixture of Menthly salicylate and 3% menthol (I-Menthol)”, Jiuguang Pharmaceutical Co., Ltd. claimed that the smell trademark has acquired identification, but the case was finally refuted by the Taiwan Intellectual Property Office. The reasons are as follows:

(1) The smell comes from the raw materials of the product itself, and it is not enough for consumers to recognize that the smell is a brand mark, or to distinguish the source of the product by the smell, so the smell does not have innate identification.

(2) The smell does not have acquired identification:
A. Although the product packaging is marked with "mint flavor", in the perception of ordinary consumers, it only describes the ingredients or characteristics of the product, and does not specifically teach consumers to identify the product by this smell.
B. Although there are discussions about the mint flavor of Salonpas on the Internet, there are not enough.
C. Although the smell has been registered as a trademark in the United States, the trademark examination standards in Taiwan and the United States are different, and registration in the United States does not mean that Taiwan should be approved for registration.

Further reading:Trademark application process|6 steps to register a trademark, complete teaching of time and cost!

Further reading:What is a good trademark? Pay attention to the 2 key trademark design keys to crack the myth of trademarks


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