Carmen Prieto Villegas y Natalia Ramos Mejía

The last two decades have represented a great revolution in terms of business strategies, whereby different companies create unconventional alternatives to attract the attention of the consuming public. Trademark law, in its quest to adapt to new trends, has introduced new brand names, called to protect non-traditional characteristics in products and services. So we are talking about non-traditional brands.

International doctrine has defined non-traditional marks as those that are not perceptible by the sense of sight, such as sound, smell, taste, touch marks. [1]

Although it is true that Law 20-00 on Industrial Property of the Dominican Republic in its Article 72.1 established between the signs considered as trademarks, the combinations and provisions of colors and the three-dimensional shapes, both considered as non-traditional trademarks, for the 1st . From March of the year two my seven (2007), with the entry into force of the DR-CAFTA, two new modalities were introduced into said legislation within these non-traditional brands, these are sound and olfactory brands.

Chapter 15 of the DR-CAFTA Treaty dealing with Intellectual Property Rights, in its section 15.2.1, provides that contracting countries must provide for the inclusion in their trademark legislation of protection for collective, certification and sound marks and may include geographical indications and olfactory marks. In the case of the application of the Dominican Republic, it was granted a term of eighteen months from the entry into force of the Treaty.

International doctrine has defined sound signs as marks perceived by the sense of hearing, made up of musical compositions, which can be represented by musical notes, or by other technological methods. Sounds like the particular scream of Tarzan in his films, the characteristic tone of Nokia and INTEL or the roar of the lion that characterizes Metro Goldwyn Mayer’s film productions have been registered in the European Union and in the United States, respectively, as they are trademarks that, in addition to possessing the distinctive character to make them eligible for registration, can be represented graphically by means of a pentagram or other means.

With the application of Law No. 424-06 implementing the DR-CAFTA Free Trade Agreement, said treaty also incorporates odors into Dominican legislation, as signs considered as trademarks.

The company Midwest Biologicals, Inc. has registered in the United States Patent and Trademark Office (USPTO) as an olfactory mark “The Scent of Chewing Gum” applied to protect an oily liquid used to cut metal and an oily liquid used to separate metals in the metallurgical industry, considering that it is a very distinctive odor, which is not an inherent or characteristic part of the product but has been applied by the manufacturer to differentiate it from its competitors, being the indication of the business origin of a product , one of the main functions of the brand.

In the case of olfactory marks, countries such as, for example, the members of the Andean Community, made up of Colombia, Venezuela, Bolivia, Ecuador and Peru, expressly allow in their regulation, the registration within their territories of said marks, However, in the absence of an express provision and given the mandatory analysis that must be carried out on the general rules for the acceptance of trademark registration, in such countries, registrability would be equally possible. Situation that would allow by analogy to be applied to those laws that do not contemplate their registration. [2]

At the national level, to date, the National Office of Industrial Property (ONAPI) has not received requests for registration of sound and smell marks, so we do not yet have experience of analysis by examiners, so we have The Director of Distinctive Signs of ONAPI, Lic. Santo Froilán Ramírez, has confirmed, there is also no specific procedure for the analysis or registration of type of marks, rather than the one already established for other types of marks within Law No. 20-00. “At ONAPI we are working to introduce these requirements into a new regulation,” said the Director of the aforementioned department.

Both in the case of sound and olfactory marks, the international trend establishes the requirement of graphic representation for registration, including in some cases a detailed explanation and in the particular case of olfactory marks “… it can be argued that the smell is the of the product itself. The solution here, to the extent that such odor is not necessary for the product, must also be that of registrability. This is also applied to perfumery products, in which their smell is sometimes their main selling point ”[3]. Law 20-00 is not an exception when establishing in its Section II, Title Registration Procedure of the trademark, article 75, numeral 2 ordinal C, that the application for trademark registration submitted to ONAPI will include, among others:

“The name of the mark whose registration is requested, when it is a word mark, reproductions of the mark, when it comes to figurative, mixed or three-dimensional marks, with or without color; in the case of a sound or olfactory mark, it must be made through a representation or description by any known means or because the brand is known. ” (our bold).

Regarding graphic representation, Marco Matías Alemán maintains: “The graphic representation of the sign is a description that allows the idea of ​​the sign object of the brand to be formed, using words, figures or signs, or any other suitable mechanism, provided that it has the expressive power of the aforementioned ”(German, Marco Matías, Regulations, Subregional on Brands of Products and Services, Top Management, Bogotá, Colombia, p. 77). [4]

For its part, the European Court goes beyond a simple graphic representation as a requirement to request the registration of a sound or olfactory mark, maintaining that: “Any graphic representation is therefore not enough, but must fulfill two conditions. The first, that it be complete, clear and precise, so that it is undoubtedly known what is being monopolized. The second is that it is intelligible to those who may be interested in consulting the registry, which are the other producers and consumers. [5]

Although Dominican legislation does not expressly establish it, it must necessarily be deduced that an examiner, when evaluating the registrability of an olfactory or sound mark, cannot limit himself only to determining its distinctive character or the possibility of its graphic representation, since it must take into account the prohibitions established in article 73 of Law 20-00 that establishes the relative impossibility of registering as a trademark, signs that consist for example:

They consist of usual or current forms of the products or their packaging, or of forms necessary or imposed by the nature of the product or service in question;
generic signs;
those that do not have sufficient distinctive aptitude with respect to the products or services to which they are applied, as to differentiate them from analogous or similar products or services; among others.

The great complication that may arise for the registration of sound or olfactory marks is the case in which it is difficult or impossible to graphically represent or demonstrate their distinctiveness to such a degree that they fully convince the examiner that such sound or such an aroma is characteristic, sufficient to distinguish a product or service from its competitors.

In the case of sound marks, the demonstration of originality is easier, since its graphic representation is more viable, so that its registration is mostly admitted in a number of jurisdictions. However, it was curious that the famous motorcycle manufacturer, HARLEY DAVIDSON MOTORCYCLES, applied for registration as a sound mark, before the USPTO, of the sound produced by the motor of the motorcycles it manufactures; This request received opposition resources from more than nine motorcycle manufacturing companies, among which are HONDA, YAMAHA, KAWASAKI and SUZUKI, among others, who supported their resources in the impossibility of granting HARLEY DAVIDSON a monopoly on sound. of an engine. HARLEY DAVISON considered it unnecessary to invest time and money in defending itself against such oppositions, so it finally withdrew its application. [6]

In turn, the registration of olfactory marks is still somewhat complex. Within the European Community, several applications have been filed for registration, such as the application “The Smell of Ripe Strawberry” for cosmetics in general, stationery and clothing [7]; as well as “The smell of Lemon” applied to the soles of shoes and footwear [8]. Both requests were rejected by the Office for Harmonization in the Internal Market (OHIM), by application of the Resolution of the Court of Justice of the European Community (ECJ) regarding the famous Sieckmann case [9] referred to above, since it was the reason for denial absolute provided for in Article 7 (1) (a) in relation to Article 4 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (‘CTMR’), since that the sign described as “The Scent of Lemon” could not be represented graphically [10].

Continuing within the scope of the European Community, a region that has been a pioneer and pioneer in the protection of novel aspects of Industrial Property, OHIM has so far only granted the registration of the olfactory mark of “The Smell of Freshly Cut Grass” whose Registration was requested in the year one thousand nine hundred and ninety-six by Vennootschap onder Firma Senta Aromatic Marketing, to protect products such as tennis balls. Said registry prospered and was finally registered in the year two thousand, as the examiners understood that said trademark was capable of graphic representation and that due to the description presented before the OHIM it had distinctive character, which would facilitate its publication and searches in the registers .

However, we allow ourselves to quote below the opinion in this regard of the Spanish lawyer, José Alberto Mérida Velázquez [11], in his opinion column, entitled “Olfactory marks under the perspective of trademark law”, namely:

“In this case, it could apparently be classified as an error in the interpretation of the legal provisions of Regulation 40/94 of the Community Trademark by the Second Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) in 1999. above, because in 2002 the Court of Justice of the European Communities (ECJ), when deciding a preliminary question raised by the German Patent and Trademark Office, decided Case C-273/00 Sieckmann. This consisted of registering an olfactory mark application, which, according to the TCJE, must comply with the requirements for graphic representation, in addition to a certain degree of distinctiveness. The possibility of the graphic representation of this type of marks was rejected, through chemical formulas; of the description with written words for not being clear, precise and objective; in addition to the deposit of a sample of odor for not being stable and durable. ”

The registration of the trademark “The Smell of Freshly Cut Grass” once registered was the subject of several appeals for annulment that ruled that said registration had expired as a result of not having been timely renewed by its owners.

Olfactory and sound brands have emerged in an era in which as a consequence of new marketing techniques and electronic commerce, traditional brands