The protection of olfactory marks under international law and law of some countries

These countries have established regulatory systems for the protection of non-traditional marks, including olfactory marks, with a number of recognized and protected applications.. From

The necessity of doing research

Trademarks are crucial for product positioning and business reputation, prompting companies to seek innovative ways to develop unique and creative trademarks that resonate with consumers Traditional trademarks, such as words and symbols, are becoming less effective in capturing consumer attention As a result, businesses are now exploring the connection between trademarks and human senses, particularly through non-visible elements like scent Research indicates that smell is a powerful differentiator, as human sensitivity to various scents allows for easy identification, such as distinguishing between durian and jackfruit This trend towards non-traditional trademarks, especially olfactory marks, is expected to grow in the future Currently, some international and national laws, particularly in the United States and Australia, recognize and protect these new types of trademarks, establishing regulatory frameworks for the safeguarding of non-traditional marks, including scents.

However, some countries still refuse recognizing this trend because of the difficulties in identifying the olfactory marks, the assessment of infringement

1 Brinks Gilson & Lione, Funky trademark trend continues as Procter & Gamble files trademark request for Old

Spice whistle, 2014, available at: http://www.brinksgilson.com/funky-trademark-trend-continues-procter-gamble- files-trademark-request-for, access on May 28 th , 2017

In Vietnam, current Intellectual Property regulations primarily protect tangible trademarks, such as words and symbols, leaving consumers largely unfamiliar with olfactory marks As international economic integration progresses, it is crucial for Vietnam's Intellectual Property law to expand its protection to include non-traditional marks This shift would not only encourage trademark owners to innovate but also align Vietnam's laws with global trends in trademark protection The author asserts that the recognition of non-traditional marks is inevitable, regardless of Vietnam's participation in agreements like the TPP This topic is increasingly relevant as olfactory marks gain traction, providing valuable insights for researchers interested in trademark development.

The literature review of research

In the international law and law of some countries

Research on olfactory marks is increasingly gaining attention globally, particularly in the US, India, China, Japan, Singapore, and Australia During the thesis study, the author discovered a wealth of documents regarding this emerging type of mark, highlighting several significant legal materials related to the topic.

(i) Wipo Magazine, Smell, Sound and Taste – Getting a Sense of Non-traditional

Trademarks, World Intellectual Property Organization, 2009

(ii) Roberto Carapeto, A Reflection About the Introduction of Non-traditional

Trademarks, available at: http://www.waseda.jp/folaw/icl/assets/uploads/2016/02/c35688e10d1c61201172065546b98301.pdf, access on July 14 th 2017

(iii) Margaret A Boulware, Emerging Protection for Non-traditional Trademarks:

Product Packaging and Design, Baker & McKenzie LLP, available at: http://www.waseda.jp/folaw/icl/assets/uploads/2016/02/c35688e10d1c61201172 065546b98301.pdf, access on July 14 th 2017

(iv) APAA, Protection of Non-traditional Trademarks Singapore: Trademark

Committee, available at: http://www.apaaonline.org/pdf/APAA_63rd_council_meeting/TrademarksCom mitteeReports2014/Singapore%20Trademarks%20Committee%20SPECIAL_T OPIC%202014.pdf, access on July 14 th 2017

(v) Kristen E Knauf, Shades of Gray: The Functionality Doctrine and Why

Trademark Protection Should Not Be Extended to University Color Schemes,

The documents primarily focus on non-traditional marks, particularly olfactory marks, exploring their development, protection conditions, and enforcement in various countries They highlight the legal disparities among nations regarding these issues and the challenges faced in establishing a robust legal framework for olfactory mark protection Notably, the author's research reveals a gap, as there are no specific recommendations for protecting olfactory marks in the current context of Vietnam.

In Vietnam

The current availability of in-depth articles on olfactory marks in Vietnam is still limited However, the author has identified several papers by local authors that focus on this topic.

Dam Thi Diem Hanh explores the distinctiveness of trademarks in her article, comparing the legal frameworks of Vietnam with those of the European Union and the United States The study highlights the importance of the trademark registration process and its implications for brand identity and protection in different jurisdictions By analyzing these legal systems, the article provides insights into how distinctiveness is evaluated and enforced, contributing to a deeper understanding of trademark law in a global context.

Đàm Thị Diễm Hạnh trong bài viết "Khả năng phân biệt của nhãn hiệu thông qua quá trình sử dụng" đã so sánh pháp luật về nhãn hiệu của Việt Nam với pháp luật của Liên minh Châu Âu và Hoa Kỳ Bài viết được đăng trên Tạp chí Khoa học kiểm sát, Trường Đại học Kiểm sát Hà Nội, số 04 (12), năm 2016, trang 48-56.

(ii) Nam Hoa, The story about smell and registering olfactory marks, Journal of

Legislative Reseaching, Congress Office, no 22 (96), 2007 (Translate: Nam Hoa,

Câu chuyện về mùi và đăng ký nhãn hiệu mùi, Tạp chí Nghiên Cứu Lập Pháp,

Văn phòng Quốc hội, số chủ đề hiến kế lập pháp số 22 (96), 2007)

Pham & Associate Law Firm specializes in the protection of olfactory marks, which are unique scents that can serve as trademarks For more information, visit their website Please note that the original link is currently inaccessible as it returns a 404 error.

Currently, there is a lack of comprehensive research addressing the protection of olfactory marks, with existing discussions primarily focusing on theoretical aspects, such as global protection and the registration application process.

In 2015, Nguyen Xuan My Hien completed a graduation thesis at the Ho Chi Minh City University of Law titled "The Protection of Certification Marks under United States Law and Its Implications for Vietnam." This thesis explores non-traditional marks and examines relevant provisions of U.S law, providing valuable insights for Vietnam's legal framework.

The article discusses five laws related to certification marks, but it does not extensively explore the origins and characteristics of non-traditional marks, especially olfactory marks Additionally, the connection between existing theories and emerging practices in this area is still somewhat limited.

Purpose of the thesis

This thesis explores the theoretical foundations and essential knowledge regarding olfactory marks within international law and the laws of various countries It aims to clarify the origin and definition of olfactory mark protection, the background and characteristics of such protection, as well as the conditions and limitations associated with this new type of mark The author seeks to highlight the growing necessity of safeguarding olfactory marks and to provide a valuable resource for future research in this area.

Delimitation of reseaching

In scope of the thesis, the author has conducted research on the following points: theory, legal grounds Accordingly, hereby will clearly point out the limitations in these above aspects:

(i) Relating to limitations on theory, the thesis concentrates on fundamental theoretical matters relating to olfactory marks protection solely under internationally legal aspects

(ii) Limitations on legal grounds including:

(a) olfactory marks protection under international treaties such as Paris Convention, TRIPs Agreement, Madrid Agreement;

The article examines the legal frameworks and significant cases related to olfactory marks in key jurisdictions, including the EU, UK, US, Australia, and Singapore These countries were selected for their notable advancements in Intellectual Property law concerning scent trademarks.

The United States, Singapore, and Australia have made significant advancements in the protection of olfactory marks, with numerous registered examples and robust regulations in place to govern their use.

This thesis will primarily examine international law and the distinctive legal frameworks of certain countries, along with their registration and management systems The author will also evaluate the limitations of Vietnamese Intellectual Property law to identify its implications.

Methodology

In relation to the research objective, multiple methods used in the thesis are, which will be applied as follows:

(i) Synthetic method: In all Chapter, relevant knowledge has been collected from various sources likely textbooks, journal articles, cases, etc;

The thesis employs the listing method to systematically present the provisions of Intellectual Property laws as outlined in international treaties and national legislation across two chapters Additionally, the author incorporates this method to highlight scholarly comments and opinions, facilitating a comprehensive analysis of the subject matter.

(iii) Comparison: the similarities and differences among the protection of olfactory marks among the international treaties and provisions of national law are clearly clarified in both Chapter 1 and Chapter 2;

(iv) Analysis method is used in all chapters to conduct an in-depth study and to form personal recommendations;

(v) Deductive reasoning: The method is aimed at demonstrating the standpoints given by the author in the thesis through the use of legal

The author identifies seven key provisions and documents derived from research literature, which are consistently applied throughout the thesis Utilizing inductive reasoning, the analysis of theories and concepts from Chapters 1 and 2 informs the author's perspectives and highlights recommendations for enhancing the legal protection of olfactory marks within Vietnamese law.

Structure of thesis

This thesis is separated into two chapters:

Chapter 1: OVERVIEW ABOUT OLFACTORY MARKS

Chapter 2: CONDITIONS FOR PROTECTING OLFACTORY MARKS

AND EXCLUDED OBJECTS FROM BEING PROTECTED

OVERVIEW ABOUT OLFACTORY MARKS

Definition of olfactory marks

The origin of trademarks can be traced back to the early circulation of products, linking their history to that of religion and anthropology According to the Ireland Patent Office, the oldest identifiable marks, although not fitting modern definitions of trademarks, were discovered on Transylvanian pottery dating back to around 5000 BC Similar marks appeared in ancient civilizations such as Egypt, Crete, Etruria, and Greece During Roman times, these marks became more distinct, evolving into some of the earliest word marks From the 12th century onward, the use of trademarks gained popularity, spreading across various products and flourishing from the 15th century Over the next few centuries, trademarks evolved in Europe, becoming widely recognized as "merchants' marks" commonly used by traders.

2 Lisa P Lukose, Non-traditional trademarks: A critique, Journal of the Indian Law Institute, Vol 57: 2, 2015, available at: http://14.139.60.114:8080/jspui/bitstream/123456789/34744/1/011_Non-

Traditional%20Trademarks%20a%20Criique%20%28197-215%29.pdf, access on June 12 th , 2017

3 Japanese Institute of Intellectual Property, The history and development of trademark, available at: https://www.iip.or.jp/e/e_publication/ono/ch2.pdf, access on June 17 th 2017

4 Ireland Patent Office, Trade Marks - a brief history, available at: https://www.patentsoffice.ie/en/Student-

Zone/Trademarks-a-brief-history/, access on June 17 th 2017

Over the centuries, trademarks have evolved from simple identifiers of products to essential components of intellectual property law, serving as vital assets for businesses This transformation highlights their significance in distinguishing products and protecting the interests of enterprises.

(i) Trademarks is considered as a source of indicator 7 ;

(ii) For the purpose of distinguishing products or services 8 ;

(iii) Quality guarantee function 9 ; and

(iv) In addition, along with the development of information technology, trademarks also have other communication functions such as communications, advertising, etc

In the course of a long-term development with these important functions, trademarks gradually affirmed their key position not only with the trademark's owners

6 “Over time, different methods of identification and distinction developed Loved ones and pets were given names

Proprietary marks, such as names or symbols, were used by craftsmen to differentiate their products from others These identifiers, while helpful, did not possess the distinctiveness of modern trademarks In ancient Rome and surrounding Mediterranean regions, similar symbols were utilized, indicating an early form of trademark as commerce began to flourish However, a formal trademark system based on property rights was not established during that time.

7 See more at: Miquel Peguera, Trademark functions and Trademark rights, available at: https://www.law.berkeley.edu/files/Peguera_Miquel_IPSC_paper_2014.pdf, access on June 17 th 2017

The quality guarantee function of trademarks suggests that consumers rely on these marks to recognize products they have previously found to be satisfactory This highlights the essential role trademarks play in consumer decision-making and brand loyalty.

Parallel Importation Cases - What Can the EU and Japan Learn from Each Other’s Experiences? IIP Bulletin,

2007, page 2-3, available at: https://www.iip.or.jp/e/e_summary/pdf/detail2006/e18_16.pdf, access on June 17 th ,

Consumers often base their purchasing decisions on trademarks, highlighting the importance of brand recognition Different trademark formats capture significant attention from customers, as the essence of a trademark resonates deeply with them As noted by a scholar, "ingenious merchants have occasionally sought protection for exotic types of trademark formats." Additionally, the rise of digital and social media has transformed branding strategies, providing companies with a robust platform to experiment and innovate.

Extreme branding has led to an expansion of trademark protections to include various scents and odors that affect the olfactory senses As people become more accustomed to diverse fragrances, they develop a heightened awareness of these scents Consequently, scents are recognized as powerful triggers for human memory, prompting businesses to increasingly explore the use of olfactory marks to signify their products Olfactory marks are emerging as a significant branding tool for the future.

Establishing a common definition is essential for protecting an olfactory mark, as it ensures that all relevant parties share a unified perception of the marks When everyone perceives the marks according to a consistent standard, effective implementation becomes possible.

9 Schechter, Roger E.; Thomas, John R., Intellectual Property: The Law of Copyrights, Patents and Trademark,

12 Lorraine M Fleck, B.Sc (Hons), M.Sc., What Makes Sense in One Country May Not in Another: A Survey of

Select Jurisdictions re Scent Mark Registration, and a Critique of Scents as Trade-marks, 2003, available at: http://www.copat.de/markenformen/eugh-kom/fleck.pdf, access on June 20 th , 2017

A unified national approach to protecting olfactory marks is essential A clear definition will enable consumers to recognize scents as trademarks, as perception plays a crucial role in evaluating distinctiveness during enforcement For instance, in the U.S., the application of secondary meaning is significant This new perspective on trademarks challenges traditional views, allowing for a broader understanding of what can be considered a trademark, thus moving beyond the limitations of conventional marks.

Under international law, there is currently no unified definition of olfactory marks, with most legal documents providing only general definitions for trademarks According to Article 15 of the TRIPs Agreement, a trademark is defined as “any sign, or any combination of signs, capable of distinguishing the products or services of one undertaking from those of other undertakings.” This includes personal names, letters, numerals, figurative elements, and color combinations eligible for trademark registration In the United States, a trademark is described as a word, phrase, symbol, and/or design that identifies and distinguishes the source of products from others Notably, Australia recognizes the protection of olfactory marks and provides a detailed definition of trademarks as “a sign used, or intended to be used, to distinguish products or services dealt with or provided in the course of trade.”

The registration of smell trademarks in Europe presents a significant challenge for EU harmonization As sensory trademarks, including olfactory marks, gain importance in marketing strategies, the legal framework struggles with the requirement of graphical representation Despite attempts to register olfactory trademarks, such as Chanel's fragrance and the smell of fresh-cut grass, many applications have been unsuccessful due to the inherent nature of the goods and the subjective nature of smell descriptions The European Court of Justice has clarified that olfactory signs cannot be represented solely through chemical formulas or written descriptions, highlighting the ongoing difficulties in establishing a coherent legal standard for smell trademarks in the EU.

14 USPTO, Trademark, Patent, or Copyright?, available at: https://www.uspto.gov/trademarks-getting- started/trademark-basics/trademark-patent-or-copyright, access on June 27 th , 2017

The term "sign" encompasses a variety of elements, including letters, words, names, signatures, numerals, devices, brands, headings, labels, packaging aspects, shapes, colors, sounds, and scents, as defined in relation to products or services provided by individuals.

In conclusion, based on the analysis of the above rules, it can be seen that, when defining an odor label, it is necessary to clarify the following three points:

(i) What are the olfactory marks including: odor, scent, smell;

(ii) An olfactory mark is a combination of one or more specific scents, odors, etc.; and

(iii) This marks is capable of distinguishing the products of one subject from another

The terminology for the new type of trademarks remains internationally undecided, with three popular names currently in use: "scent marks," "smell marks," and "olfactory marks."

The term "olfactory marks" is more appropriate when considering the intricate relationship between the olfactory glands and the sense of smell These glands, located at the top of the sinus cavity, play a crucial role in activating the olfactory bulbs within the limbic system This complex interaction highlights the significance of olfactory marks in understanding individual scent perception.

15 Section 17 of Australia Trademark Act, 1995, current to July 18 th 2017, incorporating Amendments up to Act

No 13 of 2013, modified by Schedules 3-5 to the Trade Marks Regulations 1995 (SR 1995 No 341) as amended (hereafter called “Trademark Act”)

17 Gibbons B, The Intimate Sense of Smell, National Geographic, 1986

The term "olfactory" is more inclusive than "smell," which only refers to the action of perceiving an odor through the nose, or "scent," which denotes a specific odor or incense "Olfactory" encompasses the entire process of recognizing, experiencing, and mentally storing various scents and odors Consequently, this thesis will introduce the term "olfactory marks" to describe a new category of marks.

WIPO has extensively utilized the term "olfactory marks" in its regulations, indicating that some countries allow the registration of such marks, which encompass odors, scents, and smells A survey revealed that 20 out of 72 offices accept the registration of olfactory marks Like other trademarks, olfactory marks must meet registrability criteria, and there is no justification for denying the registration of a scent if it serves as a trademark for the applicant's products This highlights that the term "olfactory" encompasses elements such as odor, scent, and smell.

Protection background

International treaties govern key aspects of trademarks, including definitions, characteristics, and protection conditions These regulations establish general criteria for signs to qualify as trademarks without limiting the types of signs eligible for protection According to the TRIPs Agreement, a trademark is defined as “any sign, or any combination of signs, capable of distinguishing the products or services of one undertaking from those of other undertakings.” This definition does not impose visibility requirements, leaving non-traditional marks, such as olfactory marks, potentially eligible for protection However, the practical application of these provisions by international courts and national laws has created challenges in registering such non-traditional marks.

The registration of colors and scents as trademarks is a significant aspect of intellectual property law, as discussed in David Snowden's dissertation This work highlights the complexities and legal implications surrounding the trademarking of non-traditional marks, emphasizing the need for clear guidelines and regulations The dissertation serves as a valuable resource for understanding how these unique trademarks can be protected under intellectual property rights.

23 Article 15 of the TRIPs Agreement, adopted on April 15 th , 1994 at Marrakesh, entry into force on January 1 st ,

The First Council Directive of 1989 broadly defines trademarks as any sign that can be graphically represented, as long as these signs can distinguish the products or services of a specific undertaking.

Convention for the Protection of Industrial Property 25 does not limit the concept of

"mark" just in the traditional domain, but the Convention specifically determine which signs may be used as trademarks to the domestic law of contracting parties 26

The Trademark Law Treaty (TLT) of WIPO explicitly excludes the protection of non-traditional marks, such as sound and olfactory marks Additionally, the treaty outlines the conditions necessary for registering a trademark.

The Treaty stipulates that it applies to marks consisting of visible signs, with the condition that only those Contracting Parties that accept three-dimensional marks are required to adhere to this provision Additionally, Article 2 (1) (b) specifies that the Treaty does not cover hologram marks or marks that lack visible signs, such as sound and olfactory marks This exclusion is based on the principle of visibility, categorizing sound and olfactory marks as invisible and therefore ineligible for trademark registration.

The TPP Agreement stipulates that no party can mandate that a sign be visually perceptible for trademark registration Additionally, it prohibits any party from denying registration based on the similarity of a sign to those of another entity.

The Marrakesh Agreement, established on April 15, 1994, created the World Trade Organization and included Annex 1C, which outlines legal instruments resulting from the Uruguay Round This agreement provides a broad definition of trademarks and grants convention members the authority to require that signs be visually perceptible as a condition for registration This information is referenced in Charles Cronin's article, "Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress," published in 2016 The article discusses the evolving landscape of intellectual property within the fragrance industry, highlighting the challenges posed by reverse engineering and the significance of trademark protection.

25 WIPO, Paris Convention for the Protection of Industrial Property, as amended on September 28, 1979, available at http://www.wipo.int/treaties/en/text.jsp?file_id(7556, access on June 17 th , 2017

The TPP allows for the registration of non-traditional trademarks, including sound and scent marks, by prohibiting the requirement for visual representation This creates favorable conditions for mark owners to register olfactory marks, emphasizing the importance of their protection in the future By removing existing barriers related to "visually perceptible" marks, the TPP opens new opportunities for the development of non-traditional trademarks, particularly in the realm of scent marks.

National law reveals inconsistencies in the understanding of the term "mark" and the criteria for "visibility" across treaties, leading to uneven recognition and protection of non-traditional marks among contracting parties Consequently, some countries allow the registration of olfactory marks as traditional trademarks, while others outright reject their legal protection The ability to register a scent as a trademark largely hinges on the interpretation of domestic law Currently, opinions on the protection of olfactory marks are divided.

27 Article 18.18, Section C, The Trans-Pacific Partnership (TPP), available at: https://ustr.gov/sites/default/files/TPP-Final-Text-Intellectual-Property.pdf, access on June 19 th , 2017

28 Lorraine M Fleck, B.Sc (Hons), M.Sc, What Makes Sense in One Country May Not in Another: A Survey of

Select Jurisdictions re Scent Mark Registration, and a Critique of Scents as Trade-marks, 2003, available at: http://www.copat.de/markenformen/eugh-kom/fleck.pdf, access on May 29 th , 2017

(1) countries that explicitly prohibit olfactory mark registration;

(2) countries that explicitly allow and/or have allowed scent mark registration; and

In three countries, the regulations surrounding the registration of olfactory marks remain ambiguous A thorough examination of relevant statutes and case law has been undertaken to assess the potential for registering scent marks.

WIPO's examination indicates that olfactory marks, including odors and scents, can be registered in various countries, with 20 out of 72 nations accepting such registrations if they meet specific criteria WIPO asserts that there is no valid reason to deny the registration of a scent that serves as a trademark for a product However, the protection of olfactory marks remains contentious, as highlighted in the AIPPI Summary Report, particularly in the European Union's stance reflected in the ECJ's decision in the Sieckmann v German Patent and Trademark Office case, which ruled out certain types of graphical representations.

- chemical formula; verbal description; deposit; or a combination It is difficult,

30 WIPO, Questionnaire on Trademark Law and Practice, document code: SCT/11/6, publication date on June 11 th ,

2003, available at: http://www.wipo.int/meetings/en/doc_details.jsp?doc_id485, access on June 6 th , 2017

31 WIPO, Standing committee on the law of trademarks, document code: SCT/16/2, Industrial Designs and

Geographical indications, Sixteenth Session, Geneva, November 13 th to 17 th , 2006

32 In trademark law, Sieckmann v German Patent and Trademark Office (case C-273/00) issued on December 12,

In 2002, the European Court of Justice made a landmark ruling regarding the graphical representation of non-conventional trademarks, specifically focusing on olfactory marks, in accordance with the European Trade Marks Directive.

The German and Dutch Groups, along with the Brazilian Group, have expressed concerns regarding the use of olfactory signs as trademarks, stating that applications to register smells are inappropriate and cannot be adequately protected.

Despite some opposition, certain stakeholders in the Report support the recognition of olfactory marks, particularly in the US and Australia The US first acknowledged an olfactory mark in 1990, specifically a floral scent reminiscent of plumeria blossoms applied to sewing thread The status of olfactory marks has been increasingly validated through statutory provisions and judicial decisions The Trademark Commission's report recommended that the definitions of "symbol" or "device" should not exclude registration of non-traditional marks such as scents Additionally, both the courts and the Patent and Trademark Office have recognized the specific scent of plumeria blossoms on sewing thread A notable case in this context is the Qualitex case, which addresses the complexities of non-traditional marks.

“Qualitex Company (Petitioner) uses a special shade of green-gold for press pads that it sells to dry cleaning firms Jacobson Products (Respondent) began to use the same

The AIPPI Summary Report on Question Q181 discusses the conditions for the registration and scope of protection for non-conventional trademarks This report is accessible online and was last accessed on June 1, 2017 For further details, please refer to the full document available at the AIPPI website.

34 The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors, 77 T M Rep 375, 421 (1987)

35 See more at: Registration No 696,147 (April 12 th , 1960); Registration No 523,616 (April 4 th , 1950) and 916,522 (July 13 th , 1971); In the Clarke, 17 U S P Q 2d 1238, 1240, TTAB, 1990

36 Qualitex Co v Jacobson Prods Co., 514 U.S 159 (1995), available at: https://supreme.justia.com/cases/federal/us/514/159/case.html, access on May 16 th 2017

Features of protecting olfactory marks

1.3.1 Evaluating the possibility of protection

The evaluation of the possibility of protection is based on two kinds, including: (i) Evaluation the ability of establishing rights 47 ; and

The evaluation of the ability of rights involves determining whether specific scents, smells, or odors qualify for protection as trademarks, a topic that will be thoroughly analyzed in Chapter 2 of the thesis Section 1.3.1 will focus on evaluating infringement, a critical aspect when seeking protection for olfactory marks and other types of marks While recognition of protection is essential, it does not guarantee exclusive use of any marks An important factor is the effective enforcement of olfactory mark protection, which is closely linked to identifying infringement cases and applying appropriate sanctions Unlike traditional marks, which are easier to identify due to their visual nature, olfactory marks present significant challenges in detection, as they rely on human sensory perception.

Infringement evaluation is crucial for the registration of scent marks, focusing on the similarities and differences between marks Unlike traditional marks, scents are invisible, making assessments reliant on appraisers' perceptions, which can lead to inconsistencies As discussed in section 1.3.2, varying perceptions among individuals can result in differing evaluations of olfactory marks This highlights the challenges in assessing scent mark infringement, causing some countries to approach protection cautiously Analyzing the practices of pioneering countries reveals that infringement assessment primarily hinges on two key factors.

(i) The rules of the law related to infringement assessment;

(iii) Facilities for assessment of marks;

Current regulations on infringement assessment primarily focus on traditional marks, despite the distinct characteristics of non-traditional marks, particularly olfactory marks This necessitates the establishment of separate rules for these types of marks Given the complexity of this field, intellectual property organizations, such as WIPO, should conduct research and provide general guidelines that member countries can adapt to create their own legislation tailored to their specific conditions.

In the second factor, with the aims of removing the barriers of the registration of olfactory marks, it is essential to establish the olfactory inspection agencies with

26 experienced experts in examining the scents, smell, odor, and relating elements, which may create consistent results in the perception of olfactory marks

The use of modern technology, such as the "electronic nose," can aid in comparing scents for infringement purposes; however, these instruments are costly and have significant technical limitations, making them challenging for developing countries to utilize effectively A viable solution lies in the support from developed nations to establish independent inspection organizations equipped with advanced machinery, enabling inspection services both domestically and internationally.

1.3.2 The perception of consumers about olfactory marks

Olfactory marks remain largely unrecognized in the business world, as many companies are hesitant to adopt this innovative type of trademark This reluctance is partly due to customers' ability to identify scents as indicators of products A key factor in the registration of these marks is the commercial impression they create If consumers cannot recognize and associate a specific smell with a product or service, the effectiveness of using olfactory marks diminishes significantly.

An "electronic nose" analyzes scent samples using techniques like neural networks and cluster analysis, producing results in a graphic format called a "patchwork." Unlike GC/MS analysis, it does not provide a detailed list of scent constituents in varying proportions due to the absence of extraction This innovative technology is primarily utilized for quality control and comparative studies, yet it shares similar drawbacks with GC/MS analysis.

Olfactory marks can serve as distinctive identifiers for products, such as a footwear company using the scent of lavender If consumers can recognize the brand solely through this scent, without traditional marks like words or symbols, it demonstrates a successful application of olfactory branding However, if customers do not associate the lavender scent with the products, the effectiveness of this registration is significantly diminished.

The protection of olfactory marks faces significant challenges due to the subjective nature of scent perception, which varies from person to person Factors such as temperature, humidity, and wind can alter the strength of a scent, leading to inconsistent recognition Additionally, individual differences in physical and mental abilities, sensitivity, and health further complicate scent perception Research indicates that the human brain can retain memories of only about sixteen distinct smells over time Consequently, many mark owners remain uncertain about customer acceptance and the practical effectiveness of their olfactory marks, highlighting the difficulties in securing protection for these unique identifiers.

1.3.3 The territoriality of protecting olfactory marks

The protection of olfactory marks, like traditional trademarks, is fundamentally linked to territoriality This territorial nature arises from two primary reasons.

50 Kenneth L Port, On Non-traditional Trademarks, Mitchell Hamline School of Law, Publication Information,

2011, available at: http://open.mitchellhamline.edu/cgi/viewcontent.cgi?article36&contextsch, access on June 24 th , 2017

International law lacks a consistent framework for the protection of non-traditional marks, especially olfactory marks, leading to varying regulations across countries For instance, while olfactory marks may receive recognition and protection under US law, they are not accepted under Vietnamese law.

The legal recognition of olfactory marks varies across countries, leading to differing conditions for protection This disparity can result in conflicts regarding the approval of olfactory mark protection on an international scale.

The inconsistency in the recognition and protection of olfactory marks across different countries poses challenges for trademark owners For instance, while a mark registered in country A is protected from infringement under its laws, transferring that mark to another country without completing the necessary registration procedures may result in a lack of protection This is particularly true unless the countries involved have Mutual Legal Assistance Agreements that ensure trademark protection Therefore, it is crucial for trademark owners to be aware of these differences to avoid obstacles during the registration and enforcement processes.

52 See more at Section 2.1.2 of the thesis

Chapter 1 of the thesis focuses on the important legal issues of protecting olfactory marks, which including:

(i) The origin and concept of olfactory marks;

(ii) The status of protecting olfactory marks in accordance with international law and law of some countries;

(iii) The features of protecting olfactory marks;

Chapter 1 provides an overview of olfactory trademarks, addressing key legal issues and the contemporary need for their development It highlights the distinctive features of olfactory mark protection compared to traditional trademarks, offering readers valuable insights into their functionality and usability This chapter also lays the groundwork for analyzing trademark protection in the subsequent chapter and presents recommendations to address challenges in safeguarding these new types of marks.

CONDITIONS FOR PROTECTING OLFACTORY MARKS AND EXCLUDED

Conditions for protecting olfactory marks

2.1.1 Overview about conditions for protecting olfactory marks under international law and law of some countries

International law currently lacks a general standard for the protection of non-traditional marks, necessitating that olfactory marks meet specific statutory requirements for protection The flexibility of international treaties, such as the TRIPs Agreement, allows for varying conditions for trademark protection, while agreements like the Paris Convention and the Madrid System aim for some level of standardization According to Article 6 of the Paris Convention, each country in the Union determines its own criteria for trademark registration based on domestic legislation, resulting in a broad range of conditions Additionally, Article 6 ter (1) imposes restrictions on registrable marks, prohibiting trademarks that include armorial bearings, flags, and other state emblems of Union countries, as well as official signs and hallmarks.

31 indicating control and warranty adopted by them, and any imitation from a heraldic point of view” 54

In accordance with Article 15 of TRIPs Agreement, the Agreement also sets out general conditions via the Article in which a mark shall be protected if they satisfy the criteria hereby:

(i) The mark is considered as a sign, or any combination of signs;

A sign must be capable of distinguishing the products or services of one entity from those of others If a sign lacks inherent distinctiveness, its registrability may depend on the distinctiveness acquired through use.

(iii) The sign is visually perceptible, in other words, the sign shall qualify the capability of being graphically represented Unfortunately, under TRIPs Agreement, the condition is just a recommendation

When researching the criteria for protecting non-traditional marks, particularly olfactory marks, it is essential to examine international treaties and the legal frameworks of countries like the EU, US, and Australia Under EU law, to invalidate a registered mark, it must comply with the requirements outlined in Article 4 CTMR For olfactory marks to be protected, they must meet specific conditions established by this regulation.

(i) Any signs which associate with commodity products;

(ii) Capability of being graphically represented; and

54 Article 6 ter (1), Paris Convention of Protection of Industrial Property, 1883

(iii) Ability of distinguishing the products of one undertaking from those of other undertakings 56

Under US law, trademark registration is currently adjusted by the Lanham Act of

1946 57 (the Act has been amended around 30 times), based on the regulations of the Act,

US law adopts a flexible approach to trademark eligibility, allowing a variety of signs to qualify as trademarks While it does not specify detailed standards for non-traditional marks, it provides general criteria that can be adapted to assess individual cases.

“The term "trademark" includes any word, name, symbol, or device, or any combination thereof:

A person must have a genuine intention to use a trademark in commerce and apply for registration on the principal register to identify and differentiate their products, including unique items, from those of others, thereby indicating the source of these products, even if the source is not known.

The range of trademark types has been significantly broadened in the United States While olfactory marks are not explicitly mentioned in the Lanham Act, U.S law acknowledges that scents can serve as effective identifiers of source.

Luca Escoffier and Arnold Jin (2015) explore the potential of olfactory trademarks as valuable branding opportunities for small and medium-sized enterprises (SMEs) in their comparative analysis of the EU and US markets.

57 ub.L 79-489, 60 Stat 427, enacted July 5 th , 1946, codified at 15 U.S.C § 105

59 Roberto Carapeto, A Reflection About the Introduction of Non-Traditional Trademarks, available at: http://www.waseda.jp/folaw/icl/assets/uploads/2016/02/c35688e10d1c61201172065546b98301.pdf, access on May 29 th , 2017

The Act outlines specific conditions regarding the ability to distinguish products, known as "distinctive character," which is a crucial factor for obtaining trademark protection.

Under Australia law, it also has the similar requirements as US law regarding conditions for registering a sign as trademark As per Section 17 of the Trade Marks Act

In 1995, a trademark was defined as a sign used to distinguish products or services offered in trade by one person from those provided by others This distinguishing feature is crucial in both US and Australian law Additionally, Australian law requires that a trademark must be capable of being graphically represented, as outlined in Section 40.

In the context of thesis research, analysis, and synthesis, the following key points must be considered to determine whether a smell can be protected as a trademark.

(i) The admissibility of smells as signs;

(ii) The ability of distinguishing products or services; and

(iii) Capability of being graphically represented;

Based on the above criteria, as right hereafter, Section 2.1.2 will present the evaluation and critical analysis below to draw the possibility of protecting smells as trademark

Jennifer Adams Draffen and Julia Anne Matheson (2003) discuss the key elements of successful registration in their article, "The Sweet Smell of a Successful Registration." The article is accessible at Finnegan's website and was last accessed on June 27, 2017.

2.1.2 Analyzing the necessary conditions for protecting olfactory marks

2.1.2.1 The admissibility of smells as signs

Signs come in various forms, including letters, symbols, colors, and drawings, all of which convey meaning and play a crucial role in trademark creation These signs influence consumer memory, aiding in the recognition of products or services, particularly when trademarks feature distinct signs that leave a lasting impression With technological advancements, businesses are increasingly innovative, incorporating unique signs such as smells, scents, and odors alongside traditional elements like words and symbols However, this trend has sparked controversy regarding the classification of smells as signs, as current international and national laws lack clarity on the definition of "sign."

To analyse the above problem, it is very necessary to study the elements of a

"sign" based on the relevant cases Until now, Australia is one of the leading and progressive countries about enacting comprehensive rules to protect trademarks, which states that:

"[ ] the definition of" sign "is an open or inclusive definition, merely listing some examples of what may constitute a sign The definition carries over the definition of

"mark" from the 1955 Act with the addition of "shape, color, sound, scent and aspect of packaging" 61

61 IP Australia, Trade Marks Office Manual of Practice & Procedure, Part 20 - Definition of a Trade Mark and

Presumption of Registrability and Part 21 - Non-Traditional Signs, available at:

Under EU law, various signs recognized by OHIM or Member States meet specific regulatory criteria In the case of Dyson Ltd v Registrar of Trade Marks, the CJEU clarified the essential characteristics a sign must possess to be accepted and granted protection.

(i) must be used in association with the products or services; and

(ii) must be clear and specific enough for consumers to be able to receive, memorize and identify the object associated with the products or services;

The CJEU emphasized that the sign in question is overly general and abstract, leading consumers to rely solely on graphic representations to identify products or services; consequently, it was not deemed a trademark While this case did not specifically address olfactory marks, it established a precedent for evaluating the protectability of a sign as a trademark.

2.1.2.2 The ability of distinguishing products

To successfully distinguish an applicant's products, the associated smells must be separate from the products themselves These smells should not arise from the natural characteristics of the products or related factors; instead, they should originate from unrelated sources For instance, while a perfume company may find it challenging to register a fragrance as a trademark, a food store can do so because the fragrance does not derive from the natural scents of food products.

62 Case C-321/03 Dyson Ltd v Registrar of Trade Marks, 2007

36 expectation that the product is a type of perfume According to US law, in the Clarke 63 case, The Trademark Trial and Appeal Board (the Board) made a landmark decision as follow:

“[…] there was no reason that a scent could not identify and distinguish certain types of products.”

The excluded objects from being protected as olfactory marks

Not all scents qualify for trademark registration; they must adhere to the intellectual property laws of each country A study of legal frameworks in nations that acknowledge and safeguard olfactory marks, along with expert analysis, categorizes exclusions into two distinct types.

(i) Signs are excluded because they do not meet the conditions for protection; and

(ii) Signs are excluded because one or more than one criterion in the characteristics of these smells are prohibited by international and national laws

Signs are excluded from trademark protection if they do not meet the conditions outlined in section 2.1 of this Chapter Specifically, a sign cannot be protected if it fails to distinguish a good or service from others in the same category or if it cannot be represented graphically Consequently, certain olfactory marks will be denied trademark protection, including smells that possess characteristic or functional elements of products.

49 smells have been widely used in daily life, smells are incapable of distinctiveness or expressing graphic representation 89

Olfactory marks are excluded from registration, particularly under the Paris Convention, which prohibits the use of certain state emblems, flags, and official signs without authorization Article 6ter (1) specifies that countries must refuse or invalidate registrations of these marks However, applying these provisions to abstract marks like olfactory marks is challenging, as the regulations primarily address visible marks Additionally, international laws lack detailed provisions regarding the exclusion of olfactory marks.

The author presents a list of smells that should be excluded from trademark protection based on expert studies Firstly, smells containing harmful components like chlorine trifluoride (ClF3) or addictive substances pose a risk to human health and should be banned from protection Secondly, smells with toxic impurities such as mercury and dioxins can lead to serious health issues, including cancer and genetic mutations, when used over extended periods.

Fifty offensive smells, such as stink and stench, are generally unappealing to customers While these odors may not pose any health risks, they are deemed unpleasant and are not eligible for trademark protection.

In conclusion, this chapter analyzes the conditions necessary for the practical protection of olfactory marks while identifying excluded objects Section 2.1 outlines the requirements for olfactory mark protection based on research into international law and the laws of several key countries.

(i) The admissibility of smells as signs;

(ii) The ability of distinguishing products; and

(iii) Capability of being graphically represented;

Chapter 2 addresses the exclusion of protection for scents, smells, or odors that directly or indirectly impact human health It clearly identifies the objects of olfactory marks eligible for protection, which is crucial for the recognition and enforcement of these marks in practical applications.

The thesis "The protection of olfactory marks under international law and law of some countries" examines the legal challenges surrounding the protection of olfactory marks Chapter 1 introduces the concept of olfactory marks, detailing their origin, definition, and protective background, while highlighting the lack of uniform regulations globally It notes that some countries do not recognize olfactory marks due to varying protectionist views and challenges in defining and assessing their distinctiveness Chapter 2 will delve into the conditions for protection and the exclusions, providing an in-depth legal analysis based on international law and the laws of various nations, building on the foundations established in Chapter 1.

Olfactory marks have yet to gain widespread recognition due to their unique characteristics and legal challenges in establishing distinctiveness Despite these obstacles, evidence presented in the thesis demonstrates that olfactory marks serve four essential functions: they identify the source or origin of a product, and they create a connection between the mark and the product.

The growing acceptance of olfactory marks, supported by their quality and advertising, suggests a future trend towards broader recognition, including in Vietnam Currently, Vietnam does not recognize the protection of non-traditional marks, particularly olfactory marks As the country develops new types of marks, it is crucial to address two key legal questions: whether to protect these new marks in Vietnam and what specific provisions should be considered for regulating the protection of olfactory marks in the Vietnamese context.

In conclusion, olfactory marks possess significant economic potential and create a strong commercial impression on consumers However, their protection presents substantial challenges for legislation, particularly in harmonizing trademark registration, establishing protection conditions, and enforcing protection procedures A key issue is the interpretation of graphical representation, which critically affects the marks' protectability Therefore, developing a uniform policy to address these challenges is essential, with WIPO playing a crucial role in providing guidelines that enable effective intellectual property regulations in each country.

Legal documents of the Socialist Republic of Vietnam

1 Law on Intellectual property right No 50/2005/QH11 (Revised 2009)

2 Decree 103/2006/NĐ-CP, detailing and guiding the Implementation of a

Number of Articles of the Law on Intellectual Property regarding Industrial

3 Decree 105/2006/NĐ-CP, Detailing and Guiding the implementation of a number of Articles of the law on Intellectual property rights and on state management of Intellectual property

4 Circular 01/2007/TT-BKHCN of February 14, 2007, Guiding the

Implementation of the Government’s Decree No 103/2006/ND-CP of

September 22, 2006, Detailing and Guiding the Implementation of a Number of Articles of the Law on Intellectual Property Regarding Industrial Property

5 Circular 13/2010/TT-BKHCN of July 30, 2010 on amending and supplementing a number of provisions of the Circular No

17/2009/TT_BKHCN of June 18, 2009 and the Circular No.01/2007/TTBKHCN of February 14, 2007

Legal documents of foreign law

7 Commission, Proposal for a Directive of the European Parliament and of the

Council to approximate the laws of the Member States relating to trade marks,

8 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark

9 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks

10 Regulations under the Singapore treaty on the law of trademarks of 2011

11 Singapore Treaty on the Law of Trademarks of March 2006

13 Trans-Pacific Partnership intellectual property provisions - TPP Agreement

16 The Nice Agreement Concerning the International Classification of Products and Services for the Purposes of the registration of Marks, 1957

17 The Vienna agreement Establishing an International Classification of the

18 The Paris Convention for the Protection of Industrial Property, 1883

19 The WTO’s Agreement on Trade-Related Aspects of Intellectual Property

20 Case C-321/03 Dyson Ltd v Registrar of Trade Marks, 2007

21 Case C-273/00 Sieckmann v Deutsches Patent- und Markenam, December 12 th ,

22 Case Qualitex Co v Jacobson Products Co 514 U.S 159

23 Case R 156/1998-2, Vennootschap onder Firma Senta Aromatic Marketing

Application, OHIM’s Second Board of Appeal, on February 11 th , 1999

24 Nguyen Xuan Quang, Le Net, Nguyen Ho Bich Hang, “Vietnamese Civil law textbook”, Ho Chi Minh National University publisher, 2008

25 Anne Hiaring, Lynn S Fruchter, Understanding Basic Trademark Law, San

26 Jeremy Phillips and Ilanah Simon, Trademark use, Oxford University

27 Kristen E Knauf, Shades of Gray: The Functionality Doctrine and Why

Trademark Protection Should Not Be Extended to University Color Schemes,

28 Luca Escoffier & Arnold Jin, To scent, or not to scent, that is the question: a comparative analysis of olfactory trademarks in the EU and US as good brand opportunities for SMEs, 2015

29 Pickering, C D G, Trademarks in Theory and Practice, Hart Publishing, 1998

30 Robert P Merges, Peter S Menell, Mark A Lemley, Intellectual property in the new technological age New York, Aspen Publishers, 2006

31 Steano Sandri, and Sergio Rizzo, Non-conventional Trademarks and Community

32 USPTO, Geographical Indication Protection in the United States, available at: https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_ system.pdf

33 WIPO, Introduction to Intellectual property: Theory and Practice, Kluwer

34 Dam Thi Diem Hanh, The ability of distinctiveness of trademarks through the using process - Comparing the law of Vietnam against the law of the European Union and the United States of America, Journal of Procuratorial Science, Hanoi