Special Product’s Aroma Can Create Unfair Competition 

By: Dr. Iman Sjahputra, SH, Sp.N, LL.M *)

Not all of trademarks are registrable. That is the doctrine. If a businessman asks which trademark is registrable and which is not, then the provisions within the Law No. 15 Year 2001 concerning Trademark never describe it in detail. Law No. 15 Year 2001 concerning Trademark only states that trademark registration cannot be opposed with the valid provision, religion, decency, public order, public domain, descriptive and mark with no distinctive element.

Under this circumstances then there is a question about what kind of trademark that is registrable? As a businessmen, you do not want to let your product has no trademark, don’t you? Because this condition is harmful since your product bear no different aspect with other businessmen’s product. Perhaps, even thought your product bear no name or trademark but public still can recognize it from its appearance and quality. But if you only rely on such aspects then it will be difficult for your product to compete in the market since it bears no name. It also will make the consumers hard to remember your product.

Trademark itself is defined as any kind of things related to picture, name, word, letters, numbers and colors combination with its distinctive power to differ one product to another and it is very important in the world of trading. This definition is given by the Law No. 15 Year 2001 concerning Trademark. The question is, what if there is something outside from the given criteria as mentioned above, whether such product is registrable or not?

For example of special aroma of a perfume, let’s say it Versace perfume, Spa smell, teasing smell of J.Co Donnut or Starbucks’ coffee? We have to admit that we always smell such aroma products when we are shopping at the malls or shopping arcades in your city? You are certainly teased to guess what good smell is that? Especially when you pass in front of perfume tenant sold by the sales person. Many perfumes trademark such as Channel, Ferragamo Salvatore, Dior even Louis Vuitton definitely has a special and distinctive aroma. Do you realize that the good smell of these perfumes in fact have special characteristic and very different between one to another. For you who are not a perfume person certainly do not care to differentiate or guess such perfume product. However the specific aroma of such perfumes will be a “matter” for perfume admirer and loyal fan.

Sharpness smell will attract perfume product admirers and loyal fans to recognize the smell from perfume they smell. They even can determine a perfume product from its smell only and without seeing the product or package directly. What now becomes a problem is how the Law No. 15 Year 2001 concerning Trademark regulating about the product’s aroma? Whether such specific products’ aromas are registrable as a trademark? Once again, the Law No. 15 Year 2001 concerning Trademark only states that “A trademark is a sign in the forms of picture, name, letters and the combination of it.”

Aroma is Not a Trademark?

So if we are taking attention on the category from this trademark definition, it clearly states that the specific aroma from a product cannot or at least not registrable yet and cannot qualifies as a trademark. In other words, the specific product’s aroma is not legally protected. Although from the product’s aroma it can lead into unfair competition. Why?

It is possible that your competitor tries to imitate your specific product’s aroma which is, let’s say, famous? Based on this condition we need to think that the specific product’s aroma is necessary to be legally protected in order to prevent such unfair competition in the trading world? The fact is that the specific product’s aroma actually has a characteristic and distinctive power between one to another product.

It is very unfortunate that international laws as reflected in many agreements, conventions, treaties, Paris Convention, Madrid Protocol, Madrid Agreement and TRIPs (Trade Related Intellectual Property Rights) are not regulating the specific product’s aroma. In practice there are parties who make issue for the specific aroma from the traded product. For example the rise of an application (Vennootschap onder Firma Senta Aromatic Marketing’s Application) in the year 1999 in Europe which was granted by the European Community Trademark Office for a tennis ball with a fresh cut grass aroma.

But there is also parties who try not to give a legal protection for this aromatic (perfume) registration. For example in the case of Sieckmann v Deutsches Patent und Markenamt where Germany Trademark Office refused the fragrance trademark registration for the goods in class 35 namely for and advertising products and business management, in class 41 namely for educational, training and sporting goods, and in class 42 namely for food, beverage and accommodation preparations. Based on the reason that aroma or fragrance cannot be described in any graphic, line or color which is assigned by the Trademark Law as a sign. Because of this decision the trademark registration for aroma (fragrance) becomes legally unclear.

Then what about Indonesia?

*) An Advocate and Law Expert in Intellectual Property Rights, domiciled in Jakarta.