Smell, sound and colour trade marks as brands and trade marks
Shabab Shariar, LLM 2024-2025
Introduction
Brands now compete with more than names and logos. A short, simple sound has the potential to cue a company much faster than a slogan. A signature smell has the potential to make an airline feel familiar the moment the traveller steps on board. A single colour can also carry decades of reputation. Although the law is trying to keep up, the rules seem to be quite strict. Protection beyond logos and mark is possible for sound, smell, and colour; however, it works only when the sign is represented with quite precision and also does not lock up something others need to compete and it's also backed by strong evidence that consumers treat it as a badge of origin. This pattern is portrayed in the UK, the EU, the US and in several Asian countries. This post explains what usually works and what doesn't, and how to file in a way that can pass examination and stand up in enforcement.
Modern statutes seem to show that any sign which can distinguish the source of goods and services may serve as a trade mark and courts therefore apply three filters. First is representation, and it is required to show the sign clearly and precisely on the register so examiners, competitors and judges know exactly what is being claimed. European Practice follows the Sieckmann Criteria, and in layman's terms, the filing is required to be clear, precise, self-contained, accessible, durable and objective. Secondly, it is functionality, and it is not possible to get a monopoly over features that others need to make or sell the product. That also includes features that are attractive for reasons that are not related to reputation. The third is distinctiveness, and most non-traditional signs are not distinctive at first sight; however, it is possible to achieve it by proving that consumers have learned to treat the sign as that of the business. Missing any of these three will potentially lead the application to fail.
Smell, sound and colour marks
Smell marks portray the representation issue most sharply. The Court of Justice accepted the idea of a smell mark in theory, but required very strict compliance with the precision requirements. Common descriptions like the smell of ripe strawberries were rejected because they are subjective, and different strawberries would smell differently. Furthermore, a chemical formula also fails to align with how people actually perceive a smell. A sample of smell also fades with time and is durable and that is exactly why most filings for smell marks fail at the first step. There are rare successes where the description is very specific and the use is long and consistent. The Play-Doh scent in the United States is the usual example. The record there included a detailed verbal description, years of steady use, messaging that taught the public to notice the smell, and strong consumer evidence. The message seems to be simple and if protected is expected then it is required to fix the smell in such a way that that others can access and verify and then further prove that consumers in the market can perceive that smell as a badge of origin.
Sound marks slightly perform better in this regard because musical notation and audio files give a more stable representation. European law affirms that a musical stave with notes as well as symbols has the potential to satisfy the rule, and that many offices accept an audio file with a short description. This is still not automatic, as the sound is just doing what it normally does; examiners will treat it as ordinary and forgettable. That is how the General Court dealt with that in Ardagh Metal Beverage Holdings GmbH & Co. KG v EUIPO,[1] where it was the sound of a can opening, further followed by a fizz. The sound arises naturally from use, and subsequently, to qualify, a sound must depart from the norms of the sector and act as a sign rather than a background noise. Applicants who will be able to create a short, memorable tune and submit both the music sheet and sound file and also use it regularly in business, are more likely to get approval.
Colour marks tend to sit between smell and sound, and European law accepts colour per se in principle. It is required to pin the shade to a recognised code and also respect the public interest in keeping the essential colours free. With regard to colour combinations, it is also required to provide a systematic arrangement. Vague colour samples and random mixes of colours will potentially be rejected due to a lack of precision. The well-known red sole example in fashion portrays that a colour that is applied to a part can be claimed without turning the whole shape into the mark, and as a result, applicants who will define a single shade with an accepted colour code and limit that claim to a narrow field of application will enjoy the best chance.
Functionality seems to undermine many applications. If a feature is necessary for the use of the product, or if it accords with an advantage, such as it is needed for the product to work, or it gives a practical benefit instead of showing reputation, it will fail to be a trademark. The United States law regards this through utility functionality and also aesthetic functionality. European law also turns toward a similar path through absolute grounds of refusal, and also an explicit public interest in keeping the features free for everyone. Many times, colour claims are blocked where the colours signal safety or are routine decoration in the concerned industry. Simple product sounds that usually arise from ordinary use are treated as functional or as too banal to indicate origin unless they depart significantly from the norm. Attempts to register shapes that give a product an advantage fail for the very same reason. As a result, if a feature helps the product work or just makes it look aesthetically appealing, it would not possibly qualify for trademark protection. In order to succeed, the feature must clearly stand out from what others in the market do and it is required to show that the competitors can still compete without using it. Subsequently, it is required to build the brand asset around an actual departure from the sector norms and should be ready to explain why competitors do not need those features to compete.
Distinctiveness is where the majority of the successful cases are awarded. Courts rarely acknowledge sound, smell or colour as distinctive without proof. The public should be educated sufficiently that the sign is pointing to the brand. This notion is known as acquired distinctiveness, and the evidence must be specific, rigorous and often country by country. With regard to the European Union, the burden seems to be quite heavy, especially for colours. Sales and advertising figures help, but are often deemed as secondary. Courts look for direct proof, such as well-designed surveys that test recognition among the relevant public in the concerned member states. In contrast, the United States seems more open to long-term use of the mark, clear advertising that teaches people to link it with the brand, and neutral consumer surveys to show that it deserves the registration. Typical colour and smell cases show that this route works when the record is built with adequate discipline. With regard to smell, narrow product markets with consistent use have potential. For colour, long use on packaging tied to a precise code along with strong survey evidence is the standard way to go.
Different legal systems
Systems employ the same lever but have different tones. The European Union removed the old graphic requirement, yet still applies the Sieckmann style precision. The United Kingdom also seem to mirror that approach. A high bar can be observed for acquired distinctiveness, with colour and smell placed under the strictest scrutiny. The United States procedure is a bit more flexible as the IP office accepts audio files and short descriptions for sound and will also register smells and colours, provided they are non-functional and secondary meaning is proved. The functionality doctrine still causes problems, but practice seems more pragmatic. China allows sound but not single colours or smells. India preserves the graphic representation central, although sound filings now accept MP3 with notation, and courts are more open to colour combinations where evidence shows that shoppers navigate by colour. Singapore modernised early and registered well-known sound marks, but practice is conservative where representation is weak. Japan opened the door in 2015 and saw strong demand. Detailed formalities and reliance on acquired distinctiveness keep the filter tight. Some offices fall behind for structural reasons. A few remain silent on non-visual signs or keep a visual perceptibility rule that blocks smells and often blocks colour per se. Others use flexible language but lack the capacity to examine non-traditional filings. Many applicants, therefore, file first in mature forums, then rely on those records to persuade developing offices.
Common complaints
Common complaints are repeated, and granting trademark rights in a hue or a perfume is considered to result in unfair monopolies. Modern doctrine already protects against this. Functionality prevents claims when rivals require the function. The public interest in maintaining colour neutrality is established in European case law. Another criticism is that smells are overly subjective. This is generally the case with today's tools, and most files fail the accuracy test because they lack a consistent method for indicating a fragrance that others may access. Another difficulty is that sound files and fragrance descriptions are difficult to find. That is a design issue with registers, not a cause to refuse protection in general.
The asset should be designed for registration from day one. A sound should be a short, clear tune written in music notation and filed as an audio file, and the specimens should show it as the main cue at a set moment, such as app launch or device start. A colour should match a single recognised code, be limited to a narrow use or a precise place on the product, and be used the same way on the same surfaces over time. A scent should be distinct and uncommon in the sector and used steadily on a narrow class of goods, with expectations set for offices that still see scent as too subjective. Functionality risk should be reduced early with a short note that explains why rivals do not need the feature to make or sell their products and why any appeal comes from reputation rather than general taste. Distinctiveness should be shown with neutral surveys at the right time and place, with recognition tracked by territory, and with look for messaging where the law allows it, so people learn that the sound, scent or colour points to the brand. Filing should follow the strength of the proof and the market, with member state evidence planned in Europe for colour per se, early secondary meaning and clean specimens in the United States, and later filings in developing offices once a proven registration exists. Enforcement should stay measured and focus on uses that trade on reputation or risk confusion, and avoid claims against functional or purely decorative uses that courts are unlikely to accept.
Conclusion
In the near future, trademark rules should catch up with how branding already works. For example, sound marks can include clear data like pitch and timing so others can find similar ones easily. For smells, new tools like gas chromatography or shared smell banks could help create precise records. The idea is that a smell can be stored or renewed over time, so it remains clear and easy to compare.
Technology such as blockchain could also make a difference. It can store digital records of non-traditional trademarks, such as sound or scent files, in a secure and shared system that no one can alter. This would make it easier for examiners and businesses in different countries to access the same data and confirm what is already protected.
In short, protection beyond logos is possible but strict. A clear sign is required, no functional purpose, and proof that people link it to the brand. If the mark is planned carefully, and technology is used to the best advantage, then the trademark could last longer than any logo.
Shabab Shariar has a primary interest in intellectual property law. His work focuses on non-traditional trademarks and broader IP issues, including trademark enforcement in online marketplaces and platform liability. He writes for academic and practitioner audiences and is developing experience in brand protection within IP law. Beyond law, he enjoys reading psychology and the grey areas of criminal law and follows cricket.
[1] Case T-668/19