C-273/00

1 — Original language: Spanish. 3 — See the first, third, fourth and fifth recitals in the preamble 2 — OJ 1989 L 40, p. 1. to the First Directive.

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names, designs, letters, numerals, the shape Marken und sonstigen Kennzeichnungen of goods or of their packaging, provided (German Law on the Protection of Trade that such signs are capable of distinguishing Marks and other Identification Marks, the goods or services of one undertaking hereinafter 'the Markengesetz') of 25 Oc- from those of other undertakings.' tober 1994. 4

5. Article 3 provides: 7. Paragraph 3(1) of the Markengesetz defines signs which can constitute a trade mark in the following terms:

'The following shall not be registered or if registered shall be liable to be declared invalid: 'All signs, particularly words, including personal names, designs, letters, numerals, acoustic signs and three-dimensional forms, including the shape of goods or of their packaging and other aspects of their pres- entation, including colours and colour (a) signs which cannot constitute a trade combinations, which are capable of dis- mark; tinguishing the goods or services of one undertaking from those of other undertak- ings, may be protected as a trade mark.'

11. The applicant also submitted an odour sample in a container and stated that the scent was usually described as balsamically fruity with a slight hint of cinnamon. 'the pure chemical substance methyl cinna- mate (= cinnamic acid methyl ester 6), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm 12. The Trade Mark Department for Class E. Merck in Darmstadt. 35 refused the application on two grounds: firstly, the sign was not capable of con- stituting a trade mark or of being repre- sented graphically (Paragraphs 3(1) and 8(1) of the Markengesetz), and secondly, it l a c k e d any d i s t i n c t i v e c h a r a c t e r C 6 H 5 -CH = CHCOOCH3' (Paragraph 8(2)(1) of the Markengesetz).

(2) If the first question is answered in terms of a broad interpretation, are the requirements of graphic representabil- 15. The study I shall undertake below in ity set out in Article 2 satisfied where order to give an answer to the question an odour is reproduced submitted must start from the concept of a trade mark by examining its functions. It will involve departing from the realms of the purely legal and embarking on a journey into non-legal territory before returning to the realm of the legal imbued with the insight that will allow me to answer the question whether an odour is capable of registration as a trade mark and, (a) by a chemical formula; consequently, of having the status which

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18. In order to achieve that objective a certain path must be followed and the means employed is none other than grant- ing to 'the trade mark owner... an assort- 17. The distinction must be such that the ment of rights and powers 13 which are consumer or end user is able to exercise intended to reserve for him the exclusive complete freedom of choice between the right to use the distinctive sign and to protect the trade mark against competitors 8 — The question of what sort of a sign it is is precisely the question to be examined in this Opinion. 9 — Article 4 of Council Regulation (EC) No 40/94 of 20 De- 10 —In its judgment in Case C-10/89 HAG GF (1990) ECR cember 1993 on the Community trade mark is couched in I-3711, the Court stated that [the function of the trade the same terms (OJ 1994 L 11, p. 1: hereinafter 'the mark... is] to guarantee the identity of the origin of the Regulation'), and the laws of the Member States contain marked product to the consumer or ultimate user by provisions to the same effect. Examples include: (a) enabling him without any possibility of confusion to Germany: Paragraph 3(1) of the Markengesetz: (b) Belgium, distinguish that product from products which have another Luxembourg and the Netherlands: Article 1 of the Uniform origin (paragraph 14). The Court held to the same effect Benelux Law on Trade Marks of 19 March 1962; (c) Spain: in Case C-517/99 Merz and Krell [2001] ECR I-6959, Article 1 of Law 32/1988 of 10 November on Trade Marks; paragraph 22. (d) France: Article 711-1 of the Code de la propriété intellectuelle; (e) Italy: Article 16 of the Decreto Legislativo 11 — Judgments in HAG GF, paragraph 13, and Merz and Krell, of 4 December 1992, No 480; (f) Portugal: Article 165(1) of paragraph 21. the Código de propriedad industrial, confirmed by Decreto- 12 — Paradoxically, in order to ensure free competition in the Ley 16/1995 of 24 January; (g) United Kingdom: section market a right is created which represents a derogation 1(1) of the Trade Marks Act 1994. Beyond the borders of from the general principle of competition, inasmuch as it the European Union, the Lanham Act, which since 1946 has enables the holder of that right to acquire exclusive rights been the basic legal text on this kind of distinctive signs at to certain signs and indications. For this reason, Article 36 federal level in the United States of America, defines trade of the EC Treaty (now, after amendment, Article 30 EC) marks and ascribes the same function to them. In Australia permits prohibitions or restrictions on imports, exports or the Trade Marks Act 1995 similarly provides that the goods in transit in Community territory, justified on purpose of trade marks is to distinguish the goods and grounds of the protection of industrial and commercial services of one undertaking from those of another property. (section 17(3)). 13 — Acknowledged in Article 5 of the First Directive.

19. The object of a trade mark is to enable consumers to identify goods and services by their origin 16 and quality. 17 Both endow the goods covered by the trade mark with 20. Communication means one person imparting something that he knows to 14 — See points 31 and 32 of the Opinion which I delivered on 18 January 2001 in Merz and Krell. Accordingly, the another. 21 Consequently, every act of owner of a registered trade mark enjoys protection where communication requires a sender, a mess- there is identity or a likelihood of confusion between his distinctive sign and that used by a third party, which age, a medium or channel for its trans- includes the likelihood of association between his trade mission, and a recipient who can decipher mark and that sign (see Articles 4(1) and 5(1) of the First Directive, and Cases C-39/97 Canon [1998] ECR I-5507, or decode it. The code in which it can be paragraph 18, and C-425/98 Marca Mode [2000] ECR I-4861, paragraph 34). expressed depends on the type of decoder 15 — See, in particular, HAG GF, paragraph 14, and Case the recipient uses to receive, comprehend C-63/97 BMW [1999] ECR I-905, paragraph 52.

pp. 1522 to 1524. 18 — A function which consolidates the reputation or image. 16 — This is what is referred to as the essential function of a 19 —The advertising, and most disputed, function of a trade trade mark (Canon, paragraph 28, and Merz and Krell, mark. More information about the functions of trade paragraph 22). In his Opinion in joined Cases C-108/97 marks in relation to the new kinds of this form of and C109/97 Windsurfing Chiemsee [1999] ECR I-2779, industrial property can be found in M.L. Llobregat, Advocate General Cosmas stated that the essential func- 'Caracterización jurídica de las marcas olfativas como tion of a trade mark 'is, first, to identify an undertaking's problema abierto', Revista de Derecho Mercantil, No 227, goods and to distinguish them from other similar products Madrid, January-March 1998, pp. 54 to 56, and M. (distinguishing function of the trade mark) and, secondly, D. Rivero Gonzalez, 'Los problemas que presentan en el to establish a link between them and a particular under- mercado las nuevas marcas cromáticas y olfativas', Revista taking (guarantee of origin)' (point 27). The aim is not to de Derecho Mercantil, No 238, Madrid, October-De- identify a product with one undertaking in particular, but cember 2000, pp. 1657 to 1664. to identify it as one of the products designated by the same trade mark, although its origin may be unknown. The aim 20 — C.H_ Fezer, ¿Cuándo se convierte un signo en marca?, a is that all products bearing the same trade mark should report presented at the Symposium on the Community originate from the same manufacturer, regardless of that trade mark held in November 1999 at Alicante, puts manufacturer's identity. See on that subject C. Fernández forward the view that the trade mark is a communication Novoa, fundamentos de derecho de marcas, Editorial symbol on the market; it acts like a code, bringing Montecorvo, Madrid 1984, pp. 46 to 49, and H. Baylos undertakings and consumers into contact in the market

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21. The entire human body is a sensory senses can constitute an indication for the receptor, which means that perception of consumer and consequently can be a sign signs by consumers can be as varied as the capable of fulfilling the distinguishing senses at their disposal. 23 function of a trade mark. 2 5

2. Signs capable of distinguishing, in par- 23. Consequently, there is no reason in ticular, olfactory signs principle why trade marks should not be created by messages which differ from those capable of perception by the eye. 26

22. If the purpose of a trade mark is to enable the consumer to distinguish the goods and services offered to him by their origin, this process can take place through any organ he uses to communicate with the outside world. The distinctive sign can be 24. Although any message which may be perceived by the sense of sight, hearing, perceived through any sense can constitute touch, smell or even taste. 24 In principle, a sign capable of identifying the goods of any message capable of perception by the an undertaking, this innate capability is not

tions. . . . Colours and light, it is true, stand in the most distinctive character: the taste of an apple describes an intimate relation to each other, but we should think of apple. A perception of taste can only be a trade mark if both as belonging to nature as a whole, for it is nature as a considered in a context other than as an impression left by whole which manifests itself by their means in an especial tasting a certain product, e.g. the flavour of apple to manner to the sense of sight. characterise a range of cosmetics.

The same harmony, from the most vehement and impassioned cry applies to the sense of touch, so I can state that only those to the gentlest word of reason, still it is Nature that speaks signs and signals that can exist spatially, such as visual, and manifests her presence, her power, her pervading life auditory and olfactory signs, and can be perceived and the vastness of her relations; so that a blind man to independently of the article of which they represent a whom the infinite visible is denied, can still comprehend an characteristic, can be trade marks. infinite vitality by means of another organ. Cf. the work by S. Maniatis, op. cit., pp. 222 and 223, on And thus as we descend the scale of being, Nature speaks the difficulty of identifying a product by smell before to other senses — to known, misunderstood, and buying it. unknown senses: so speaks she with herself and to us in a thousand modes.' (Preface to the First Edition of the 26 — M.D_ Rivero González (op. cit., p. 1646) confirms that Theory of Colours, translation by Charles Lock Eastlake; market research studies have shown that the perception of published by John Murray, London, 1840; republished by stimuli by the consumer using senses other than sight when MIT Press, Cambridge, Massachusetts, and London, distinguishing products can be very useful for the com- England, 1970). munication that the trade mark seeks to achieve.

29 — 'Ich glaube, der Mensch träumt nur, damit er nicht aufhöre zu sehen' ('I think we dream only so that we can carry on 26. However, care must be exercised when seeing'), he said in Elective Affinities (Hamburg edition in speaking of the subjectivity and objectivity 14 volumes, Volume 6, 'Wahlverwandtschaften', 10th. edition, 1989, C.H. Beck). There is nothing more personal than dreaming. 30 — The same applies to its interpretation. 27 — Cf. my considerations on this in footnote 25. 31 — An example of this is the fact that when confronted with a catalogue of paint colours as used by a hardware shop, 28 — See O. Laligant, 'Des œuvres aux marches du droit selecting a particular colour (pink, green or blue) from d'auteur: les œuvres de l'esprit perceptibles par l'odorat, amongst the various shades (spread over 20 or 30 cards) is le goût et le toucher', Revue de recherche juridique. Droit a real problem. The human eye can differentiate without prospectif, 1992, No 1, pp. 107 and 108, cited by likelihood of confusion between only three or four shades J.-P. Clavier, 'Les catégories de la propriété intellectuelle of the same colour. The average consumer is unable to à l'épreuve des créations génétiques', Edition L'Harm- distinguish closely-related or similar colours from one attan, 1998, p. 248. another (see M.D. Rivero González, op. cit, p. 1673).

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35 — P. Süskind, 'Dos Parfum. Die Geschichte eines Mörders', Diogenes Verlag, 1. Aufl., 1985, Zürich ('Perfume: The Story of a Murderer') tells the story of a man in 18th- century France with an extraordinary sense of smell, who causes numerous deaths around him with his fragrances until he is involved in a shocking scene of cannibalism. On page 107 et seq. he states: 'Es gibt eine Überzeugungskraft des Duftes, die stärker ist als Worte, Augenschein, Gefühl und Wille. Die Überzeugungskraft des Duftes ist nicht

There is no the intention is to symbolise goods or defence against it'). 36 — Page 1677. 37 — An article appeared in Le Monde on Saturday, 7 July 2001 (p. 16) with the title 'Fouiller la mémoire pour accroître 32 — It should be remembered that colour cards on the market, I effet des publicités', stating that researchers in cognitive for example, can show up to 1 750 nuances of colour sciences and neurophysiology were helping advertisers to shades (see M.D_ Rivero González, op. cit., footnote 78, improve the memorisation of advertising messages. p. 1675). 38 — C. Baudelaire expresses this wonderfully in his poem 'Le 33 — In his 'Notes on painting' (in Diderot on Art - 1, Yale parfum' taken from 'Spleen et Idéal' in Les Fleurs du mal, University Press, New Haven and London, 1995, p. 196) Ed. Gallimard (La Pléiade), Paris, 1971, p. 39: Diderot wrote: 'Drawing gives a being form; colour gives it life.' The relationship between colour and form was 'Lecteur, as-tu quelquefois respiré explained vividly in 1975 by C. Metz in his work 'Lo Avec ivresse et lente gourmandise percibido y lo nombrado' (available on the Internet at Ce grain d'encens qui remplit une église, 'www.otrocampo.com'). Metz said that when two items in Ou d'un sachet le musc inveteré? a fashion magazine are of the same cut but different in colour, they are regarded as being the same garment in two Charme profond, magique dont nous grise 'shades', since our culture, reinforced by language, endows Dans le présent le passe restauré objects (shapes) with permanence. What changes is the Ainsi l'amant sur un corps adoré attribute. If the two items were of the same colour but a Du souvenir cueille la fleur exquise. different cut, nobody would think or say that the boutique had 'the same colour in two different garments'; instead, one would say 'two garments of the same colour'. Colour Dans ses cheveux élastiques et lourds

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emotions are closely interlinked, as Marcel so much of the odour as the scented Proust well understood. 39 product, regardless of its fragrance. 41

mark. Firstly, the trade mark consists not essential that this capability be demon- strated in practice over a specified period of exclusive and uninterrupted usage (second- 39 — It was the phenomenon of involuntary memory provoked ary meaning). In such cases rights under the by certain sensory perceptions, evocative of occasions in the past, that sparked the creative process of M. Proust in trade mark accrue by usage, not by regis- A la recherche du temps perdu ('Remembrance of Things tration. A sign becomes a trade mark if Past', or 'In Search of Lost Time', from 'Marcel Proust's Remembrance of Things Past', edited by Harold Bloom, in customers accept it as such. 42 the series Modern Critical Interpretations, Chelsea House Publishers, New York, New Haven and Philadelphia,

Trade Ed. du Seuil, Paris, 1974, pp. 133 and 134). In particular, marks of this nature would be admissible only for products the musty smell emanating from the old dank walls of the which were not normally associated with an odour. entrance to some toilets, where the narrator was waiting for Françoise, filled him with a lasting pleasure that he 42 — See J.T_ McCarthy, 'Les grandes tendances de la léglisation could rely on, delightful, mild and teeming with enduring sur les marques et sur la concurrence déloyale aux truth, certain and inexplicable (M. Proust, A la recherche Etats-Unis d'Amérique dans les années 1970', La Propriété du temps perdu, A l'ombre de jeunes filles en fleurs, Éd. industrielle, Revue mensuelle de l'Organisations Mondiale Gallimard, La Pléiade, Paris, 1987, vol. I, p. 483). de la Propriété intellectuelle. No 10, October 1980,

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32. In the legal order of the European 34. In France, 47 fragrances can be pro- Union, the Office for Harmonisation in tected by copyright, 48 and in the Benelux the Internal Market has allowed the regis- an olfactory trade mark has been allowed tration of the 'smell of freshly-cut grass' as for cosmetic products. 49 a trade mark for tennis balls. 43 This seems to be a 'pearl in the desert', however, an individual decision which is unlikely to be repeated. 44

3. Impossibility for olfactory marks to be 'represented graphically'

The Benelux the Trade Marks Registry refused to reg- trade marks office has also allowed the smell of freshly-cut ister a mark consisting of the smell, aroma grass as a trade mark for tennis balls. or essence of cinnamon for articles of 50 — Paragraph 8(1) of the German Markengesetz expresses the same idea in its preclusion of the registration of signs furniture and parts and fittings thereof 'which are not capable of being represented graphically'. This requirement is also imposed by Article 711-1 of tne (trade mark No 2000169). French Code de la Propriété Intellectuelle, Article 165(1) of the Portuguese Código de la propriedad industrial and Article 16 of the Italian trade marks law.

Finally, No 428.870, the 'smell of fresh cut grass', future practice although the present law in Spain does not contain such a of the Office would be continue to demand a (two- requirement, Article 4(1) of the trade mark Bill currently dimensional) graphical representation of all non-verbal before Parliament defines a trade mark as 'any sign capable marks as a condition of application. of being represented graphically' (Boletín Oficial de las Cortes Generales, Senate, Part II: Draft Legislation, No 31 45 — See paragraph 33 et seq. of the written observations of the (a) of 4 July 2001, p. 6). Graphical representa bili ty is not a United Kingdom Government regarding olfactory trade requirement in the legal system of the United States of marks in the United Kingdom. America, which perhaps explains why this kind of mark is 46 — Paragraph 37. more widespread in that jurisdiction.

36. This requirement is imposed for rea- Secondly, it must be intelligible to those sons of legal certainty. A registered trade persons having an interest in inspecting the mark grants to the owner a monopoly, an register, in other words other manufac- exclusive right to use the signs which turers and consumers. 51 Distinctive char- comprise it. By inspecting the register of acter and graphical representability are two trade marks, it must be possible to know, properties having the same common pur- to the full extent of the public nature of pose of enabling the products on the registers, the nature and scope of the signs, market to be selected by potential buyers references and symbols registered as a trade on the basis of their origin. Signs compris- mark, which is why a graphical represen- ing a trade mark are represented graphi- tation is required. If an undertaking cally in order to protect and publicise their reserves certain signs and references for appropriation by an undertaking, which itself in order to distinguish its goods and has reserved the signs for itself with the aim services from those of other undertakings, of individualising the goods or services it the symbols so claimed must be known offers. very precisely so that other people may be properly guided. For reasons of legal cer- tainty, the requirement of graphical repre- sentation is thus linked with the identifica- tion function, the primary and essential function of trade marks. 39. Can an odour be 'drawn'? Can an olfactory sign be graphically represented in a way which is precise and clear for everyone? In my view, the answer is no. It also seems to be no for Mr Sieckmann, who admitted in his oral statement at the 37. Graphical representation entails hearing that odours cannot be represented describing something by means of symbols graphically. To reach this conclusion, it that can be drawn. Consequently, the will suffice to examine the alternatives capability of a sign of being 'rendered on proposed by the Bundespatentgericht in its paper' and thus perceived visually must second question. exist in addition to its intrinsic identifica- tion capability. Since the purpose is to differentiate, the representation must be effected in a comprehensible manner, since comprehension is a precondition of discern- ment. 40. The chemical formula represents not the odour of a substance, but the substance itself. The entry would consist of the chemical constituents and their precise proportions required to obtain a certain 38. In other words, graphical represen- tation per se is not enough: it must meet two criteria. Firstly, it must be complete, 51 — In its written observations, the United Kingdom Govern- ment rightly states that a representation would not be clear and precise, so that the object of the acceptable if it demanded undue effort on the part of the person inspecting the register in order to determine what right of exclusivity is immediately clear. the sign was from its representation (paragraph 32(c)).

41. Even if the description of a sign or signal in written language is a graphical representation, this still does not meet the applicable criteria of clarity and preci­ 55 56 — The Austrian Government demonstrated this with an sion. Due to the reasons given above, example in their written observations: no two oenologists will describe the same wine in the same way (paragraph 4(2)). To take just one example: the bouquet of the wine Chateau Talbot (denomination of origin: Bordeaux, Saint-Julien) of the 1992 vintage is described as 52 — Who would experience the formula C 6 H 5 - C H = 'an exotic and extrovert bouquet of black cherry preserve, CHCOOCH3 as 'a balsamically fruity scent with a slight truffles and liquorice, with a distinctive note of plants and hint of cinnamon'? herbs, full-bodied and soft, juicy and tasty' (R. Parker, Les 53 — The United Kingdom Government further explains in its vins de Bordeaux, Éd. Solar, Paris 1999, p. 317) and also written observations that many smells are caused not by a as a 'bouquet of coffee grounds with an earthy quality and single chemical substance, but a mixture. Identifying the a wonderful structure, rich and concentrated' (Le guide nature of the sign from a number of complex chemical Hachette des vins 1996, edited by J. Arcache and C. Mon- formulae would cast an undue burden on persons con­ talbetti, Paris 1995, p. 327). sulting the register (paragraph 41). 57 — H.E. Meister, citing K. Lorenz, says that part of the 54 — H.E. Meister states in 'Markenfähigkeit und per se-Aus- difficulty in objectivising smells is due to the limitations of nahmen im Gemeinschaftsmarkenrecnť, WRP — Wettbe­ language, and dates back to the time when the only known werb in Recht und Praxis, No 9/2000, p. 967 et seq., that experience was ontogenesis. This is why smells are 'freshly-cut grass' does not smell the same in his home described by reference to other items ('smell of cinnamon'). town as in Alicante. 58 — S. Maniatis, op. cit., quotes the description used when 55 — Unless the mark is purely a word mark. For example, the registration was sought for the perfume 'Chanel No 5': word mark 'tapitoli' is distinctive in itself, unless there 'the fragrance of an aldehydic, floral perfume with a top exist other identical or similar names for identical or note of aldehydes, bergamot, lemon and bitter orange; an similar products (see Articles 4(1) and 5(1) of the First elegant, flowery middle note of jasmine, rose, lily of the Directive). valley, iris and ylang-ylang, and a feminine, sensual base The edition of OAMI News already referred to states that note of sandalwood, cedar, vanilla, amber, civet and musk. the Office does not generally regard a description as an This fragrance is also known under its written name: adequate substitute for a graphical representation. No 5'.

61 — There would be nothing abnormal in a person inspecting 59 — If the description of a smell were to be allowed as a trade the register of trade marks, smelling the sample deposited mark, why not that of a feeling? For example: sorrow, fear, there, and concluding that the scent they perceived did not hope or well-being. match the description in the entry, despite their having nothing to say about the registered chemical formula 60 — Volatility is an essential precondition for a substance which would be a mystery to them. having a smell. Perfumes smell because they are volatile. The volatility of their components is not uniform. The 62 — Sensory assessment, gas chromatography (GC) and high sensory receptors perceive the olfactory impulses emitted performance liquid chromatography (HPLC), described by by the most volatile element ('top note') first. The 'middle MX. Llobregat, op. cit., pp. 102 to 105. note' represents the centre of the perfume. The most 63 — M. Mathely, 'Le droit français des signes distinctifs', durable and least volatile notes are the 'base notes', which Librairie du Journal des Notaires et des Avocats^ Paris, give the fragrance character and make it last. 1984, p. 42.

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46. In brief, odours cannot be 'represented accordance with that provision, they can- graphically' as required by Article 2 of the not constitute trade marks and con- First Directive, although they may have sequently cannot be registered as such, by distinctive character. For this reason, in virtue of Article 3(1)(a) of the Directive.

IV — Conclusion