Non-conventional trademarks however include smell and sound marks. In this post, I will discuss smell marks, which have had a chequered history in different jurisdictions. In 2001, the European trademark registry held in the landmark case of that an olfactory mark could not be granted to a "methyl cinnamate" scent, described as “balsamically fruity with a slight hint of cinnamon" for its failure to fulfil the graphical representation requirement. The strict standards for graphical representation laid down in Sieckmann were adopted in the , which although lacking the force of law, noted that scent marks cannot be graphically represented under Indian trademark law. Similarly, as per one of the key amendments to the Canadian , which came into effect in 2019 the definition of ‘trademark’ has been broadened to include non-conventional marks such as scent, taste, colour and texture, among others. The graphical representation requirement was waived�� in the EU as per the�� (2017), though non-traditional trademarks would still need to comply with the clarity and precision standards as per the CJEU’s judgment in , which require the mark to be: clear, precise, self-contained, easily accessible, intelligible, durable and objective (para 55). Through this post, I examine some concerns regarding providing a state monopoly over a smell to the that makes her product smell artificially better.

A previous on this issue argued that non-conventional trademarks are not undesirable because they make free intellectual resources inaccessible. Quoting McCarthy, it was argued that one could not conclude that any item was in the public domain until all possible exclusive IP rights over it had been exhausted. However, the point is not that classical music can potentially be trademarked by a manufacturer of dental equipment to make the equipment’s noise less unpleasant, despite another musician’s copyright over it but that such a trademark restricts the sound from being used by other manufacturers as an attractive selling feature to benefit a larger set of consumers.

A more important question is whether smell marks fall foul of the functionality doctrine? The functionality doctrine in trademark law is based on the anti-competitive effects of granting a single producer a monopoly over a useful product feature. It is reflected in S.9(3) of the Indian Trade Marks Act which recognises in the context of shape marks that a shape that results from the nature of the goods or is necessary to obtain a technical result is prohibited from registration. This prohibition under trademark law is because the protection of designs and functionalities for a limited time lies within the domain of patent and not trademark law (which allows for protection in perpetuity).

An illustrative example of a prohibition on ‘smell marks’ is the case of ., where the U.S. Court of Appeals observed that the colour pink for a liquid preparation used to treat stomach disorders was functional and thereby could not be monopolised by a single producer as it provided a “pleasing appearance to the customer and sufferer.” This broad ruling is critical as smell marks are typically and will predictably be used to improve the overall experience of using the product that they’re attached to. When the product is inherently ugly, unpalatable or foul smelling, the scent or pleasant appearance may add substantial value to the product. ��Therefore, if a medicine smells like strawberry and via some scratch and sniff branding, the consumer can identify it uniquely at the point of sale, one pharmaceutical company should not be allowed to monopolise it and exclude other traders from using strawberry smelling medicines. Thus, smells can be trademarked only if it can be demonstrated that the smell does not add substantial value to the product and that the consumers’ decisions to buy the product is not based on its smell. ��Further, the smell must distinguish the product in the market, allowing the consumer to unequivocally trace its source at the point of sale. Furthermore, as per the ECJ’s ruling in the context of shape marks in , registration of non-conventional trademarks that achieve a technical result could not be justified�� because of the existence of “other shapes capable of achieving the same technical performance.”

The previous on this issue posited two separate questions qua the desirability and capability of registration of non-conventional trademarks and answered both independently and affirmatively. I argue that the impracticability of precisely delineating the subject matter of non-conventional trademarks (particularly smell marks), materially expands the scope of trademark protection available and thus, also has a bearing on the desirability of such protection itself. In other words, the practical inability to tell apart smells objectively (particularly because they are perceived differently by different people), runs the risk of trademark overenforcement. Currently, innovation around the using multiple odour capsules is increasing. As the legal certainty regarding the registration of smell marks solidifies, even when the precision of what is protected remains debatable, it will lead to a doctrinal creep in the usage of resources otherwise freely available. This includes not just the trademarked formulae but also odours with different formulae which approximate the trademarked smell since people would rather not use these ‘desirable’ smells or sounds than run the risk of infringement. This lack of precision can also translate into a likelihood of confusion among consumers and is pertinent to what they end up associating with the brand: the specific formula sought to be trademarked or even different formulae which might smell similar to varying degrees? With respect to the for tennis balls which was registered as a mark in the U.K, Prof astutely questions, “Do we need a spectrogram produced by an electronic nose technologist to delineate it?” Similarly, representation via a stave and a cleft was considered adequate for registration of a sound mark in the ��case despite being arguably to an audience that is not music literate. This is important because causing confusion is an absolute ground for refusal of registration of a mark as per S.9(2)(a) of the Indian Trade Marks Act.

Finally, aptly laid down the rationale for the graphical representation requirement in trademark law- to define the precise subject of the mark and allow competitors and users to determine unequivocally the exact nature of the mark . While simple descriptions of scent marks grant a few sellers a monopoly and prohibit others from utilising common, routinely available features to make their products attractive, more complex descriptions may approximate patent claims and increase the transaction costs for the scope of registration to avoid infringement, along with consumers’ environment with competing scents. These are some policy questions that merit consideration before we expand the subject matter of what can and should be allowed to be trademarked today.

Written by Anupriya Dhonchak, an international exchange student at Osgoode Hall Law School from National Law University, Delhi and is currently working as a Research Assistant to Dr. Carys Craig.

Reposted with permission from the author. Originally published on

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In the context of theatre, the presentation emphasised the function of the script as a text that comes into being with the purpose of being performed. This assumes significance for any meaningful analysis of the reasonable scope of the author-playwright’s moral rights. Empirical research reveals the inherently collaborative nature of creative processes in the context of creating theatrical works, which are often centred around workshopping. The workshopping process involves various agents, i.e., actors, playwrights, and directors assuming each other’s roles interchangeably and often radically reimagining the script such that it can be said to be collectively authored by the end of the process. This collaborative process is conceptually mutilated to fit the individualistic ideal of authorship under copyright law, producing the legal certainty and convenience of dealing with a single rights holder. The creativity emerging out of the that the complex, messy, unpredictable, and organically negotiated workshopping process entails is inherently of the nature of a . This is often obscured by the law’s privileging of the whose superior genius merits protection for both his personhood interests tied to the work as well as the public’s interest in receiving the work as it was originally imagined by the author.

What stood out to me particularly during the presentation was the deliberate academic choice that Dr. McDonagh makes in his work to explore and reveal the lived experiences underlying the arbitrary categories and standards that copyright law creates—legal categories that and insulate the law from critique by mystifying it via neutral rules and evidentiary standards. Using this context, I analyse joint authorship through a feminist lens in this post.

The strongest justification for moral rights emerged out of the theory, which meant to protect the author’s deep connection with his or her work, which is regarded as an extension of his or her personality itself. However, when an actor’s speech patterns are used to write dialogues, he or she could potentially be said to acquire a personhood interest in the script. Similarly, when a woman is recognised as a muse and the work created is dedicated to her as a tribute, it is possible that she has a greater personhood interest in the work that statedly reflects her personality than the male writer who decided to fix his expression around it. Rendering women and their experiences knowable predominantly through a also incurs public interest costs arising out of a homogenous public sphere where the lack of diversity of voices cripples creativity.

The recent decision by the UK Court of Appeals in seems to be shaping the contours of the law on joint authorship in the UK towards “identifying the true nature of the interaction between the parties”. The situatedness of this identification within crucial context makes it valuable to feminist scholarship in exposing power differentials among parties. However, the case also quoted Ezra Pound’s contribution to , a poem regarded as solely authored by T.S. Eliot. The Court held that despite Pound’s significant contributions, which were more than sufficient to justify a claim for joint authorship based on their nature and extent, the work was not jointly authored because “neither” poet regarded it so. Building upon a very insightful question put forth by Dr. Carys Craig, it is important to consider whose intention is considered crucial for a claim of joint authorship to succeed and what are its implications.

According to the British Columbia Supreme Court in , Canadian law required evidence of the parties’ shared intent to be joint authors in addition to working towards a common design and making significant expressive contributions to become part of a unitary whole. The Canadian Federal Court (FC) disapproved of this decision in by holding that Neudorf was incorrect in requiring evidence of the parties’ shared intent to be joint authors. The decision in Neudorf emerged from a reliance on US standards for joint authorship, such as those used by the US Court of Appeals in which held that the of any person to the status of a joint author must not occur unless every collaborator intended that the other be a joint author of the work. The FC in Neugebauer held that the Canadian Copyright Act was similar to the UK Copyright Act of 1912 in this regard and did not require the joint intent of parties for joint authorship. However, the FC in Neugebauer also held that the Neudorf standard was met in the case based on the facts therein. Thus, while Canada awaits an authoritative determination that joint authorship can be found in the absence of shared intent, the shared intention of the parties to be joint authors continues to have strategic if not determinative value in Canadian caselaw.

As per an empirical study titled ‘’, women comprise on average 30% or less of the artistic directors, directors, and playwrights in theatres in Canada, Australia, the UK, and the US. The widest gender disparity is conspicuous in the playwright category: 63% of the productions were authored by men, 22% by women, and 15% by mixed gender partnerships. In Canada, women make up fewer than 30% of theatre’s creative leaders, despite constituting a majority of theatre audiences (49% women compared to 40% men), a majority of all of theatre school students at the National Theatre School of Canada (58%) and writing plays that are 18% more profitable than those written by men (ironically, the routine excuse for non-production of women’s plays is that they are riskier at the box-office). I call this phenomenon the ‘ of women’s creative labour in theatre, which can be revealed by feminist inquiries into the power struggles involved in the creation of works of theatre. Women’s intellectual and creative contributions are susceptible to being cited out of male bibliographies, and trivialised as emotional labour that they are socialised and expected to perform. Often this male gaze can be significantly internalised and women may find it difficult to challenge the personhood interests of external actors in their personality and work by doubting the significance of their own contributions.

A jurisdiction such as the US, that requires the joint intent of parties to create a jointly authored work, can end up privileging the intention of the white male author who intended his work to be solely authored and assumed his female partner’s contributions to be those of a “friend and critic”. In a jurisdiction that recognizes authors’ moral rights, the moral rights would then vest in the male author as the legally entitled sole author because there was no common intention to be joint authors regardless of a “common design to create” and ��notwithstanding the actual creative contribution of the woman to the work.

A cause and effect of this feminisation is the pedagogical use of works by at theatre schools, which impact graduates’ choices as artists and audiences regarding the plays that they produce and support. There is arguably a public interest involved in developing and using the law with the purpose of fostering the creation and production of works by female playwrights in order to challenge a system premised on the reification of at the cost of alternative non-conforming identities, values, and works.

However, even as I write this, I am cynical of the potential of any reimagined copyright system to meaningfully further the goals of distributive justice because of the gendered and often privileged nature of 1) the required to be creative 2) the ability and impetus to one’s ideas in a medium and 3) to one’s claims in a court of law. Nonetheless, this recognition of the limited potential of copyright as a system to lead to social justice is useful to interrogate the values orienting its justifications and shed light on the extent to which they fall short of the objectives they unabashedly claim to fulfill.

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Anupriya Dhonchak is an international exchange student at Osgoode Hall Law School from National Law University, Delhi and is currently working as a Research Assistant to Dr. Carys Craig.

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In 2019, with the help of a German lawyer, the controversial patent on has been challenged. A Dutch company had been holding the patent on processed teff flour, the grain that Ethiopian farmers have been cultivating for nearly 3,000 years. What makes this particularly glaring, apart from the fact that teff is native to Ethiopia, is that the Dutch company concerned had also collaborated for research on teff with the and agreed to share the findings. The Dutch teff patent not only stripped millions of Ethiopian farmers of their rights, but also led to a , thereby making it inaccessible for poorer urban Ethiopians.

Moreover, an anti-fungal product derived from Azadirachta indica, commonly known as neem or Indian lilac, was by the United States Department of Agriculture and W. R. Grace and Company. Neem is a tree that is native to the Indian subcontinent and has been used for its medical benefits for more than . The Indian government successfully challenged the patent on the grounds of prior use and obtained a ruling in its favour by the European Patent Office (EPO). W. R. Grace subsequently appealed on the ground that prior art of the product had never been published in any scientific journal. However, the appeal was lost and the EPO

Another example of biopiracy is the British patent by Syngenta for the strain of Impatiens walleriana, also known as Syngenta bred a new strain of Busy Lizzie called the that “can achieve at maturity, trails of 70cm masses of large flowers”. An analysis of Syngenta’s new “floral invention” revealed that Syngenta cross-bred the Busy Lizzie with a rare African plant called Impatiens usambarensis, native and unique to the Usambara region of Currently, the company is making a fortune selling these plants by monetising their natural disease resistant qualities but to the native communities of Tanzania. A recent study demonstrated that Africa may be losing more than USD from its biodiversity as medicines, cosmetics, agricultural products, and indigenous knowledge relating to these are being patented illegally, despite prior use by local communities for generations as illustrated by multinational companies, without there being evidence of benefits accruing to local communities in the countries of origin.

Biopiracy emerged as a issue after the inclusion of the Agreement on Trade Related Aspects of Intellectual Property (TRIPS) by the WTO which universalised Euro-American notions of patentability, enabling the extraction of traditional knowledge from the Global South as the “” and its return to the South as a commodity. As per the TRIPS, WTO member countries must comply with a minimum threshold of IP protection, which encompasses patentability of life forms that can be deemed to be ‘invented.’ Thus, it comes as no surprise that the was a direct result of because the benefits of this predictably flow to many US based agro-chemical and pharmaceutical industries.

Further, the Convention on Biodiversity 2000 was meant to treat biodiversity as a category of nationally sovereign genetic resources, inscribing a propertied meaning upon components of the often-sacralised natural world of local communities. This global reduction of nature, locally considered as a “quasi-rational and moral whole or even as an autonomous world of living beings endowed with measure of dignity” to an “object of right capable of alienation” can be used as a theoretical starting point to critique the expansion of Western Intellectual Property Rights regimes tyrannising the most marginalised populations in the Global South.

The (IGC),constituted in 2000, was tasked with the negotiation for a legal framework for protection of traditional knowledge, folklore and genetic resources. The IGC’s efforts have been further complemented by the ��in 2010. However, even as the mandate of the IGC has been to the next biennium (2020-2021), the legitimacy of its processes and terms of negotiation continues to be suspect due to the woeful by indigenous communities as well as little budgetary allocation to enable their participation in the IGC’s negotiations.

Biopiracy is illustrative of the developmental monoculture and agenda underscoring Global IP regimes and their exploitative extension to the developing world. The chronopolitics of these negotiations are fascinating because indigenous communities are now being increasingly compelled to defend their culture at, what is regarded by dominant Western narratives as, the cost of the public domain. However, the countries currently championing the public domain in the context of Traditional Knowledge, led by the US were the same ones that relentlessly bolstered IP protection over the decades to exclusively reap the benefits of the ‘knowledge’ they ‘sophisticated’ by utilising raw materials from the Global South. It is vital to explore both the material, human and social costs as well as impact of Global IP protection in the status quo while imagining alternative and more contextual non-Eurocentric methodologies to protect traditional knowledge, that place native welfare and social justice instead of commerce and efficiency at the centre.

Written by Elif Babaoglu and Anupriya Dhonchak. Elif Babaoglu is a contributing IPilogue editor and the co-director of events at the Osgoode Privacy Law Society. Anupriya Dhonchak is an international exchange student at Osgoode Hall Law School from National Law University, Delhi and is currently working as a Research Assistant to Dr. Carys Craig

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