Scent marks are one of the unique types of non-traditional trademarks in the world. In Vietnam, there are currently no regulations on the registration of scent marks. Recently, the National Assembly of Vietnam passed the Amended Intellectual Property Law 2022, which stipulates a new type of non-traditional trademark, sound mark. However, regulations on scent marks are not mentioned. Therefore, at present, the scent mark will not be protected in Vietnam.
In recent decades, Vietnam has actively participated in many new-generation free trade agreements with extensive and comprehensive commitments such as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and the EVFTA Free Trade Agreement between Vietnam and the European Union.
In the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) replacing the previous TPP Agreement, there is a provision on intellectual property as follows: No Party shall require, as a condition of registration, that a sign be visually perceptible, nor shall a Party deny registration of a trademark only on the ground that the sign of which it is composed is a sound. Additionally, each Party shall make best efforts to register scent marks. A Party may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark.
The CPTPP Agreement comes into force for Vietnam on January 14, 2019. In order to enjoy exclusive tariff preferences from the agreement, Vietnam has committed to comply with, implement and realize its commitments to the intellectual property section, including the latest claims on sound trademarks.
On June 16, 2022, Vietnam passed the Amended Law on Intellectual Property 2022, effective from January 1, 2023, of which the effect on sound marks took effect from January 14, 2022.
Accordingly, the commitment to register the sound trademark of Vietnam has been fulfilled. However, the provision of ‘best efforts to register scent marks’ is currently not mandatory for CPTPP member countries, so the provision of scent marks is not mentioned in the revised Intellectual Property Law 2022 of Vietnam.
Therefore, Vietnam currently does not have regulations, order, procedures as well as methods to conduct Vietnam trademark registration for scent signs. However, in the future, to ensure compatibility with the provisions of the CPTPP, Vietnam needs to consider conducting additional regulations, order and procedures for registration of scent marks in Vietnam.
Classification of marks through senses
Clause 16, Article 4 of the 2005 Intellectual Property Law of Vietnam stipulates that a mark is a sign used to distinguish goods and services of different organizations and individuals.
Trademarks have many uses, the most important of which is to convey information to customers and consumers about their products and services in order to distinguish them from those of another party. Among them, the ability to distinguish is the most important for the recognition of a sign as a mark.
That is why text and image marks are the two most popular types of trademarks both in Vietnam and in the world, because the way of distinguishing this mark through visual (eye) is the most common method for consumers. However, sight alone is not enough. After sight in popularity is hearing (ear) and the ability to hear to distinguish.
That is why, after all types of marks that can be distinguished visually, the National Office of Intellectual Property of Vietnam has issued a new regulation on sound marks – a relatively common sense after visual in Vietnam and in the world.
Behind both sight and hearing are smell (nose), taste (tongue) and touch (skin). Among these three senses, the sense of smell (scent) is relatively more common, because taste and touch both need direct contact to be distinguished, and smell only needs the person to appear near the source of the scent to be able to smell and relatively, the scent can also be moved with current human science and technology over many distances, typically in perfume in glass bottles, plastic bottles that can be shipped around the world.
In the future, if science can make sense of taste and touch common for normal people (for example, through a robot that realizes skin tissues using cutting-edge projection technology) then the ability to register taste and touch trademarks will become more common than it is now.
The Agreement on Aspects Relating to Intellectual Property Rights (TRIPS/WTO Agreement) stipulates that a trademark is “a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”.
Accordingly, the possibility of trademark registration for signs that are not visually recognizable is possible in WTO member countries. However, the registration of scent marks will still depend greatly on the intellectual property laws of the countries and the policies and international commitments of which that country is a member of, like Vietnam with the CPTPP.
Currently, the scent mark has been defined in the Intellectual Property Laws of some countries such as the United States, United Kingdom, Australia, Canada, New Zealand, Korea, Peru, Colombia, France, and UAE. The process of reviewing scent trademark applications of these countries will be done on a separate basis. The Intellectual Property Offices of these countries do not list a list of registrable or unregistrable scent signs.
In particular, the ability to distinguish will play the most important role in the application examination process. The applicant must be able to demonstrate that their registered scent is distinct from other parties’ registered or previously filed scent marks. Considering according to the appraisal procedures of the above countries, the distinctiveness of scent marks can be divided into two categories: distinctiveness in itself and distinctiveness through use.
The ability to distinguish itself is achieved by proving the uniqueness of the mark, which is capable of performing the distinguishing role between goods and services. Accordingly, the scent will be a sign added to an existing product to help distinguish one person’s goods from another’s goods through the sense of smell.
The most typical of this type of scent mark is the trademark “THE SMELL OF FRESH CUT GRASS” filed by Vennootschap onder Firma Senta Aromatic Marketing in the Netherlands for EUIPO for tennis balls. Currently, this trademark has expired since 2007 (the trademark owner does not renew it), so other parties wishing to register this scent mark can apply to EUIPO.
The ability to distinguish through use is achieved by associating the perception of consumers in a certain territory with the scent on the product that makes it different from other scents.
A prime example of this type of scent mark is the “Phumeria Blossoms” mark for a product “sewn and embroidery thread” (heading 23) based on evidence that the scent has acquired distinctiveness through market use. In 2007, this trademark was invalidated with the status of “710 – Cancelled – Section 8”, meaning the trademark owner could not prove evidence of commercial use of the mark – one of the requirements of the USPTO to maintain the validity of the trademark.
Registration of a scent mark
Although the examination process for scent marks or other marks requires comparison with trademarks that have been granted protection certificates or marks under examination with earlier registration dates, in fact, this process has not been utilized by the intellectual property authorities of the countries with the regulations on the registration of scent marks.
Neither the United States nor the European Union has looked closely at the pre-registered scent marks or the marks under examination because the number of scent marks currently granted is too small, difficult to duplicate.
In addition, trademarks that have been granted like the two above are also invalidated for many reasons, mainly because currently most consumers do not associate the perception between scent marks and products, or services of a business, as distinct from other types of visible visual marks.
That’s why, according to the National Office of Intellectual Property of Vietnam, currently, an applicant for scent trademark registration only needs to pay attention to 3 main characteristics so that the scent sign can be registered as a scent mark:
• distinct scents that are immediately recognizable to consumers;
• the scent has acquired distinctiveness through use in the marketplace;
• the scent that is not natural or functional.
In addition, another important point that applicants need to pay attention to when registering an scent and sound mark (in Vietnam) is that the sign must be presented in a certain form in order to be registered. In the case of an sound mark, an application for an sound trademark should include a trademark sample of an sound file and a graphical representation of the sound.
For scent marks, the European Union’s Intellectual Property Office currently stipulates that an application for registration should contain a sign presented in such a way that the competent authority or the public can identify it clearly and accurately. Meanwhile, the US and Australia only require a detailed description of the mark.
Because of this open regulation, the United States has a relatively larger number of scent trademark registrations than the European region.