Cyril Amarchand Mangaldas (“CAM“) acted as Indian legal counsel to Sumitomo Rubber Industries Ltd. in relation to the prosecution of its smell mark application in India.
A trade mark application No. 5860303 was filed by Sumitomo Rubber Industries Ltd., Japan, seeking registration of a trademark “FLORAL FRAGRANCE / SMELL REMINISCENT OF ROSES AS APPLIED TO TYRES” on 23.03.2023 in class 12 — “tyres for vehicles” – on a “proposed to be used basis”, representing the first smell mark application in India.
The application was initially objected under Sections 9(1)(a) and 2(zb) of the Trade Marks Act, 1999 for lacking distinctiveness and not being supported by a graphical representation. Mr. Pravin Anand was appointed as an amicus curiae in the matter to assist the Registry and submitted a supporting scientific report to scientifically and objectively establish the distinctiveness of the mark applied for.
On 21st November, the Controller General of Patents, Designs and Trade Marks has accepted the trade mark application, holding that it satisfies the criteria laid down for registration under the Trade Marks Act, 1999, as it is clear, precise, self-contained, intelligible, objective and is represented graphically, and has directed the Registry to advertise the trade mark under Section 20 of the Trade Marks Act, 1999 as an ‘olfactory mark’ along with the graphical representation and description submitted by the Applicant. This decision represents the first acceptance of a smell mark application in India and paves the way for India’s journey towards accepting and adopting non-conventional marks.
The transaction was led by Swati Sharma, Partner (Head – Intellectual Property); Revanta Mathur, Partner; with support from Sannat Chandna, PA — Designate.