OPINION OF ADVOCATE GENERAL

M. D. Ruiz-Jarabo Colomer

delivered on 6 November 2001 ( )

Case C-273/00

Ralf Sieckmann

v

Deutsches Patent- und Markenamt

(Reference for a preliminary ruling from the Bundespatentgericht (Germany))

(Trade marks ? Approximation of laws ? Directive 89/104/EEC ? Signs of which a trade mark may consist ? Distinctive character and graphic representability ? Unsuitability of olfactory signs as trade marks)

1. The reference for a preliminary ruling submitted by the Bundespatentgericht (Federal Patents Court) (Germany) concerns the interpretation of Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks( ) (hereinafter the First Directive).

2. The Bundespatentgericht is asking the Court for an interpretation of the concept sign capable of being represented graphically, within the meaning of Article 2 of the First Directive.

In particular, it wishes to know whether signs such as odours, which cannot be directly represented graphically and consequently cannot be perceived visually, but which can be reproduced using certain aids, can be trade marks. Should this be the case, the German court further asks the Court what the requirements are for the graphical representation of olfactory signs.

I – Legal framework

1. Community law: the First Directive

3. The purpose of the First Directive is to approximate the trade mark laws of the Member States in order to remove disparities which may impede the free movement of goods and freedom to provide services or distort competition within the common market. However, the intervention of the Community legislature, not being intended to achieve full-scale approximation of these laws, remains limited to certain aspects concerning trade marks acquired by registration.( )

4. Article 2 of the First Directive provides:

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

5. Article 3 provides:

The following shall not be registered or if registered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;

... '

2. German legislation

6. In order to transpose the First Directive into German law, the German legislature enacted the Gesetz über den Schutz von Marken und sonstigen Kennzeichnungen (German Law on the Protection of Trade Marks and other Identification Marks, hereinafter the Markengesetz) of 25 October 1994( ).

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

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 presentation, including colours and colour combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings, may be protected as a trade mark.

8. Paragraph 8(1) of the Markengesetz provides:

Signs eligible for protection as trade marks within the meaning of Paragraph 3 which are not capable of being represented graphically shall not be registered.

II – II - Facts of the main proceedings and questions referred for a preliminary ruling

9. Mr Sieckmann deposited with the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, the Office) an olfactory mark as a distinctive sign of the services in Classes 35, 41 and 42( ). (5) That olfactory mark consisted in:

the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester( ), 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 E. Merck in Darmstadt.

C6H5-CH = CHCOOCH3

10. In the event of the description not being sufficient to satisfy the requirements of Paragraph 32 of the Markengesetz, the applicant declared his consent in the alternative to an inspection of the files relating to the deposited mark pursuant to Paragraph 62(1) of the Markengesetz and Paragraph 48(2) of the Markenverordnung implementing that law.( )

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.

12. The Trade Mark Department for Class 35 refused the application on two grounds: firstly, the sign was not capable of constituting a trade mark or of being represented graphically (Paragraphs 3(1) and 8(1) of the Markengesetz), and secondly, it lacked any distinctive character (Paragraph 8(2)(1) of the Markengesetz).

13. The applicant appealed to the Bundespatentgericht against that refusal. That court held that in theory odours may be capable of distinguishing the goods of one undertaking from those of another, but it had doubts as to whether an olfactory mark can satisfy the condition of graphic representability under Article 2 of the First Directive. Since the Bundespatentgericht is of the opinion that the outcome of the main proceedings depends upon the interpretation of that condition, it has submitted the following questions to the Court:

1) Is Article 2 of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) to be interpreted as meaning that the expression signs capable of being represented graphically covers only this signs which can be reproduced directly in their visible form or is it also to be construed as meaning signs - such as odours or sounds - which cannot be perceived visually per se but can be reproduced indirectly using certain aids?

2) (2) If the first question is answered in terms of a broad interpretation, are the requirements of graphic representability set out in Article 2 satisfied where an odour is reproduced

(a) by a chemical formula;

(b) by a description (to be published);

(c) by means of a deposit; or

(d) by a combination of the abovementioned surrogate reproductions?

III – Examination of the questions referred for a preliminary ruling

14. The Court is confronted here with an issue both stimulating and significant. The question is whether an odour can be registered as a trade mark and what conditions must be satisfied for this to be the case.

15. The study I shall undertake below in order to give an answer to the question 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, consequently, of having the status which the Community legal order ascribes to this form of intangible property.

1. Functions of trade marks. Trade marks as a means of communication

16. A trade mark is a sign,( ) the purpose of which is to distinguish the goods or services of one undertaking from those of another. This is plainly expressed in Article 2 of the First Directive.( )

17. The distinction must be such that the consumer or end user is able to exercise complete freedom of choice between the possibilities presented to him( ) and thus to promote free competition in the market. The first recital in the preamble to the First Directive expresses a similar idea, stating that the purpose of the intended approximation of laws is to eliminate the disparities between the laws of the Member States which impede the free movement of goods, freedom to provide services and, ultimately, free competition. Trade mark law is an essential element in the system of undistorted competition which the Treaty seeks to establish and maintain, ( ) and the intention of the Community legislature in approximating the laws of the Member States was to support this. The distinctive sign is therefore the starting point, with free competition as the objective( ).

18. In order to achieve that objective a certain path must be followed and the means employed is none other than granting to the trade mark owner ... an assortment of rights and powers( ) which are intended to reserve for him the exclusive right to use the distinctive sign and to protect the trade mark against competitors who wish to take advantage of its status and reputation.( ). This is what has become known in the case-law of the Court as the specific object of a trade mark. ( )

19. The object of a trade mark is to enable consumers to identify goods and services by their origin ( ) and quality.( ) Both endow the goods covered by the trade mark with an image and a reputation: the reputation of the trade mark.( ) The matter is thus one of establishment of a dialogue between manufacturer and consumer. The manufacturer gives the consumer information in order to make him aware of the goods, and sometimes persuades him as well.( ) A trade mark is in reality communication.( )

20. Communication means one person imparting something that he knows to another.( ) Consequently, every act of communication requires a sender, a message, a medium or channel for its transmission, and a recipient who can decipher or decode it. The code in which it can be expressed depends on the type of decoder the recipient uses to receive, comprehend and assimilate it. Homo sapiens is thus a recipient with a wide variety of decoders.( )

21. The entire human body is a sensory receptor, which means that perception of signs by consumers can be as varied as the senses at their disposal.( )

2. Signs capable of distinguishing, in particular, olfactory signs

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 perceived by the sense of sight, hearing, touch, smell or even taste.( ) In principle, any message capable of perception by the senses can constitute an indication for the consumer and consequently can be a sign capable of fulfilling the distinguishing function of a trade mark.( )

23. Consequently, there is no reason in principle why trade marks should not be created by messages which differ from those capable of perception by the eye.( )

24. Although any message which may be perceived through any sense can constitute a sign capable of identifying the goods of an undertaking, this innate capability is not always the same. The reason for this is very simple: perception of the outside world by human beings differs, depending upon the sense or window through which it takes place. ( )

25. In neurophysiology, a distinction is generally made between mechanical and chemical senses. The first group consists of touch, sight and hearing, which are all easily comprehensible because they relate to the concept of shape and form (gestalthaft) and can be described relatively objectively. Characterisation of the latter group, the senses of taste and smell, is more problematic due to the absence of precise rules for determining their content. In Western culture, the senses of smell, taste and also touch are of lesser importance. For Plato and Aristotle, they were the senses that gave less pure and uplifting pleasure than sight and hearing. In the Europe of the Enlightenment, Kant presented them as unrewarding senses, while Hegel regarded them as incapable of providing real knowledge of the world or one's own self. Freud and Lacan banished them to the animal kingdom, associating the development of civilisation with the weakening of these senses.( )

26. However, care must be exercised when speaking of the subjectivity and objectivity of the senses. There are no objective or subjective sensory organs. In the work cited above, Goethe asserted that the sense of sight and the perception of colours were clouded by relativism. ( ) On the other hand, we know that the description of a work of music is not always the same, ( ) depending on the listener and his sensitivities. After all, the person receiving a message is an individual with his own experience and unique capacity for perception. In other words, sensory perception can only be described as more or less perfect, and consequently the recipient's description of what he perceives will only be accurate to a greater or lesser degree.

27. It would be difficult at this level to attempt any general characterisation of the senses in order to confirm that sight is the most developed. The ability of the human eye to perceive colours is just as limited( ) as the ability of the sense of smell to perceive odours. Moreover, a description of a colour can be just as inaccurate and difficult as that of an odour.( )

28. Where does the difference lie, then? Whereas the eye sees not just colours, but also shapes, ( ) the sense of smell only permits perception of the colour of an odour and never its outline. ( ) The sense of sight operates over a wider range and therefore has a wider range of perception. That, when defining a sign, is in my view the major difference between visual messages, and the olfactory messages which are of interest here.

29. In any case, I believe that the abstract ability of a sign, capable of perception by the sense of smell, to fulfil an identification function is completely beyond question. If the intention is to symbolise goods or services of a particular origin in order to distinguish them from those of a different origin, or if it is a question of evoking a specific source, a quality or the reputation of an undertaking, the best thing is to fall back upon a sense that, like the sense of smell, is undoubtedly, even persuasively, evocative. ( ) M.D. Rivero states in the work cited above ( ) that studies of the perception of odours have shown that the olfactory memory is probably the best one that humans possess. ( ) The sense of smell is, because of its special function in the nervous system, very closely linked to the limbic structures that affect memories and emotions. ( ) According to the latest discoveries in neurophysiology, memories and emotions are closely interlinked, as Marcel Proust well understood.( )

30. This ability of signs capable of perception by the sense of smell to fulfil the distinguishing function of trade marks is not just of a theoretical nature. Some legal systems have permitted olfactory trade marks, that of the United States being the first. On 19 September 1990 a trade mark was registered for sewing thread and embroidery thread, consisting of a fragrance of fresh flowers reminiscent of mimosa. ( ) However, two qualifications must be made on the subject of that trade mark. Firstly, the trade mark consists not so much of the odour as the scented product, regardless of its fragrance.( )

31. The second qualification is more complex and refers to a particularity of the United States system of trade mark registration. Unlike under the Community legal order and the legal systems of most of the Member States, not only must a particular sign possess distinctive character in order to be registered as a trade mark, but it is also essential that this capability be demonstrated in practice over a specified period of exclusive and uninterrupted usage (secondary meaning). In such cases rights under the trade mark accrue by usage, not by registration. A sign becomes a trade mark if customers accept it as such.( )

32. In the legal order of the European Union, the Office for Harmonisation in the Internal Market has allowed the registration of the smell of freshly-cut grass as a trade mark for tennis balls. ( ) This seems to be a pearl in the desert, however, an individual decision which is unlikely to be repeated.( )

33. In the United Kingdom ( ) the United Kingdom Trade Mark Registry has allowed two olfactory marks: the fragrance of roses, applied to tyres (trade mark No 2001416), and the smell of bitter beer applied to flights for darts (trade mark No 2000234). Despite this, the practice in relation to this kind of trade mark is currently changing, as the United Kingdom Government stated in its written observations. ( ) For example, by decision of 16 June 2000 confirmed on appeal by judgment of 19 December 2000, the Trade Marks Registry refused to register a mark consisting of the smell, aroma or essence of cinnamon for articles of furniture and parts and fittings thereof (trade mark No 2000169).

34. In France,( ) fragrances can be protected by copyright, ( ) and in the Benelux an olfactory trade mark has been allowed for cosmetic products.( )

3. Impossibility for olfactory marks to be represented graphically

35. Under the provisions of Article 2 of the First Directive, it is not sufficient for signs to be capable of distinguishing the goods or services of one undertaking from those of other undertakings in order to constitute a trade mark; in addition, they must be capable of being represented graphically.( )

36. This requirement is imposed for reasons of legal certainty. A registered trade mark grants to the owner a monopoly, an exclusive right to use the signs which comprise it. By inspecting the register of trade marks, it must be possible to know, to the full extent of the public nature of registers, the nature and scope of the signs, references and symbols registered as a trade mark, which is why a graphical representation is required. If an undertaking reserves certain signs and references for itself in order to distinguish its goods and services from those of other undertakings, the symbols so claimed must be known very precisely so that other people may be properly guided. For reasons of legal certainty, the requirement of graphical representation is thus linked with the identification function, the primary and essential function of trade marks.

37. Graphical representation entails describing something by means of symbols that can be drawn. Consequently, the capability of a sign of being rendered on paper and thus perceived visually must exist in addition to its intrinsic identification capability. Since the purpose is to differentiate, the representation must be effected in a comprehensible manner, since comprehension is a precondition of discernment.

38. In other words, graphical representation per se is not enough: it must meet two criteria. Firstly, it must be complete, clear and precise, so that the object of the right of exclusivity is immediately clear. Secondly, it must be intelligible to those persons having an interest in inspecting the register, in other words other manufacturers and consumers. ( ) Distinctive character and graphical representability are two properties having the same common purpose of enabling the products on the market to be selected by potential buyers on the basis of their origin. Signs comprising a trade mark are represented graphically in order to protect and publicise their appropriation by an undertaking, which has reserved the signs for itself with the aim of individualising the goods or services it offers.

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 hearing that odours cannot be represented graphically. To reach this conclusion, it will suffice to examine the alternatives proposed by the Bundespatentgericht in its second question.

40. The che mical 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 product, but not the olfactory sign. Furthermore, such a representation would lack the necessary clarity and precision. Only very few persons would be able to interpret a smell on the basis of the chemical formula representing the product from which it emanated, that is from the elements of which it consisted, and the quantities ( ) that would have to be mixed to obtain the product. ( ) In addition, the same product can give off different olfactory signs depending on such chance factors as its concentration, the ambient temperature or the substance bearing the odour.( )

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 precision. ( ) Due to the reasons given above, the description of a design presents fewer difficulties than that of a piece of music, a colour or an odour. The shape associated with the design allows its features to be objectivised, which is not the case with signs which are not figurative. A description of a smell is burdened with more subjectivity ( ) and therefore relativity, ( ) which is inimical to precision and clarity. The case in the main proceedings is a good example of what I wish to express here. The applicant is applying for trade-mark protection of a balsamically fruity scent with a slight hint of cinnamon. What does balsamically mean? What should be understood by fruity? How intense is the slight hint of cinnamon? It would be impossible with this description to identify the olfactory sign for which the applicant is claiming exclusive rights. Even if the description were longer, it would not gain in precision and nobody could ever know beyond doubt of what the odour in question consisted.( ) It seems obvious that the description of an odour is not a sufficient graphical representation for the purposes of Article 2 of the First Directive. ( )

42. Finally, the deposit on the register of a sample of the chemical product that produces the smell is not a graphical representation of the distinctive sign. Although depositing a sample of the substance that produces the odour may be permissible, the difficulties of registration as regards clarity and precision would be compounded by further problems associated with publication of the mark and the passage of time. Due to the volatility of its constituents, an odour changes over time, and can even disappear completely.( )

43. If none of the surrogate reproductions proposed in the second question can individually meet the criteria of being represented graphically, enabling the sign or signs comprising the mark to be clearly and accurately identified, the sum of all those surrogate reproductions is likely to create yet more uncertainty. Registration of a chemical formula, together with an olfactory sample and a description of the odour it produces, increases the number of messages intended to identify the sign and therefore the risk of different interpretations, which can result in greater uncertainty.( )

44. I have no wish at all to deny that olfactory messages can be represented in writing, I am aware of various systems employed in science to record smells( ), but in their current states of development they all suffer from the difficulties mentioned above, and from the lack of the clarity and precision necessary for the visual expression of a distinctive mark in respect of which exclusivity is sought in the form of a trade mark.

45. It is not necessary expressly to exclude certain signs from legal provisions regarding trade marks. They exclude themselves, because they are unable to comply with the requirements of trade mark law.( )(63)

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

IV – Conclusion

47. In the light of the foregoing, I propose that the Court should answer the questions referred by the Bundespatentgericht for a preliminary ruling as follows:

1) Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks requires, if a sign is to be registered as a trade mark, that it have distinctive character and be capable of being represented graphically in a full, clear and precise way which is comprehensible to manufacturers and consumers generally.

2) At present, odours cannot be represented graphically in the way described and therefore cannot constitute trade marks in accordance with Article 2.