Abstract
This contribution examines the evolution of protection for sound and olfactory trademarks within the European and Italian legal systems, with particular attention to the abolition of the requirement of graphic representation. After reconstructing the role of case law (Shield and Sieckmann) in defining the criteria for representing a sign, the analysis focuses on the reform introduced by the EU TradeMark Package and on the new standards of clarity, precision and objectivity. The substantive requirement of distinctiveness is examined as the central selective parameter for non-conventional signs. The analysis highlights how, while sound marks have achieved stable practical recognition, olfactory marks still present significant technical and legal challenges.
What is a sound trademark and what is an olfactory trademark?
A sound trademark is a sign consisting of a sound capable of distinguishing the goods or services of one undertaking from those of its competitors. It is not a decorative element, but a legal instrument for identifying commercial origin.
Well-known examples include Netflix’s opening “ta-dum”, Intel’s jingle, and the lion’s roar introducing Metro-Goldwyn-Mayer productions. In these cases, the public immediately associates the sound with a specific economic operator. The distinctive function of a trademark does not depend on the sensory channel involved, but on the sign’s ability to identify a particular undertaking.
An olfactory trademark, by contrast, consists of a fragrance or scent used to identify the commercial origin of a product or service. The underlying logic remains the same: the scent must enable consumers to recognize the producer.
A well-known precedent is the scent of freshly cut grass applied to tennis balls, registered with the EUIPO and not renewed in 2006 ( EUIPO Boards of Appeal, 11 February 1999, Case R 156/1998-2, Vennootschap onder Firma Senta Aromatic Marketing).
In summary, sound and olfactory trademarks are non-conventional signs (see: What are the main types of trademarks? – Canella Camaiora): the medium through which they operate changes, but their legal function—distinguishing one undertaking from others—remains the same.
It is precisely when moving from sight to hearing or smell that the technical and legal problems emerge, problems that have shaped subsequent legislative developments.
Why was graphic representation the main obstacle to sound and olfactory trademarks?
The admission of sound and olfactory marks into the system of industrial property protection was not immediate. The first European trademark directives (Directive 89/104/EEC and Direttiva 2008/95/CE) made no express reference to non-visual signs.
It was the case law that intervened to clarify whether a sound could be registered as a trademark.
In its judgment of 27 November 2003 (Case C-283/01), known as Shield, the Court of Justice held that a sound sign may constitute a trademark, provided that it is capable of distinguishing the goods or services of one undertaking and is capable of graphic representation.
The issue, therefore, did not concern distinctiveness as such, but the manner in which the sign was to be represented in the register.
In the case of a musical composition, the solution was relatively straightforward: a musical score with staff, clef, notes and rests could suffice (Shield, para. 62).
The difficulty arose in relation to non-musical sounds. In paragraph 55 of Shield, the Court specified that graphic representation had to be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
This was not a mere formality, but a guarantee for third parties and competent authorities: the register must enable the exact subject matter of protection to be understood.
In this context, simple noises proved problematic. Onomatopoeic expressions were considered inadequate because they vary from country to country and are subjectively perceived. Even for well-known sounds—such as the roar of a motorcycle engine or a cockcrow—the issue was not recognizability, but the possibility of translating the sound into a stable and verifiable representation.
In the case of the lion’s roar used by Metro-Goldwyn-Mayer the EUIPO Boards of Appeal examined several technical tools, including oscillograms, spectra and spectrograms, ultimately considering the sonogram suitable to meet the required criteria. The same instrument was later used for the registration of the stag’s call for Jägermeister liqueur.
The difficulties were even more evident for olfactory trademarks.
In this area, the Sieckmann judgment (Court of Justice, 12 December 2002, Case C-273/00) played a decisive role. The Court ruled that a chemical formula, a written description, or the deposit of a sample could not satisfy the requirement of graphic representation.
A chemical formula describes the substance, not the perceived scent. A sample, moreover, does not guarantee stability and immutability over time.
The same approach was confirmed by the General Court on 24 October 2005 (Case T-305/04), when it rejected the application for registration of the scent of ripe strawberries for various products. The verbal description, even when accompanied by an image, was not considered sufficiently precise. Furthermore, the smell of a strawberry is not univocal: different varieties exist, with different olfactory perceptions.
The overall picture is coherent: before the European reform, the real obstacle to registering sound and olfactory trademarks was the requirement of graphic representation.
The theoretical possibility of protecting a sound or a scent was not in question; rather, the problem lay in fixing it in the register in a clear, stable and objective manner. It was precisely on this point that the European legislature later intervened, substantially modifying the conditions of access to protection for non-conventional signs.
How is a sound trademark registered today and what requirements must it meet?
The turning point came with the abolition of the requirement of graphic representation.
The so-called EU Trade Mark Package—Directive (EU) 2015/2436 and Regulation (EU) 2017/1001 on the European Union trade mark—eliminated the obligation to represent the sign by graphic means.
Recital 10 of Regulation (EU) 2017/1001 provides that a sign may be represented in any appropriate form using generally available technology, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
In Italy, Article 7(1) of the Industrial Property Code (Legislative Decree No. 30 of 10 February 2005), in line with Article 4 of Regulation (EU) 2017/1001, requires that the sign be capable of distinguishing the goods or services of one undertaking and be represented in the register in a manner that enables competent authorities and the public to determine clearly and precisely the subject matter of protection.
For sound marks, this means that registration may now take place by means of:
- the filing of an audio file in MP3 format, which is normally the preferred solution;
- the filing of musical notation in JPEG format, provided that it includes a staff, clef and note indications.
If both forms are submitted, their content must coincide perfectly.
Once the problem of graphic representation has been overcome, the focus shifts to the substantive level.
The central requirement is distinctiveness. The sound must be perceived by the public as an indicator of commercial origin and not merely as a decorative or descriptive element.
Case law has clarified that even a short sound may possess distinctive character (General Court, 13 September 2016, Case T-408/15; General Court, 10 September 2025, Case T-288/24), provided that consumers immediately associate the sign with a specific undertaking, without needing to combine it with additional word or figurative elements.
Emblematic, in this respect, is the recent registration as a sound trademark of the well-known voice of Luca Ward, confirming that even a vocal timbre may acquire autonomous distinctive character where the public immediately associates it with the dubbing artist.
Conversely, banal or functional sounds—such as the standard noise of a car engine—are refused. In such cases, the sign does not perform an autonomous identifying function but merely describes the product or represents a technical characteristic.
Today, therefore, the registration of a sound trademark is no longer hindered by rigid formal limits. The real assessment concerns the ability of the sound to function as a trademark in the proper sense.
The situation remains different for olfactory trademarks, which still present specific challenges.
Can a fragrance be registered as a trademark today?
In theory, yes. In practice, however, the registration of an olfactory trademark in the European Union remains complex.
Article 7(1) of the Italian Industrial Property Code (Legislative Decree No. 30 of 10 February 2005), in conformity with Article 4 of Regulation (EU) 2017/1001, does not exclude that a scent may constitute a trademark, provided that it is capable of distinguishing the goods or services of one undertaking and is represented in the register in such a way as to enable authorities and the public to determine clearly the subject matter of protection.
The issue, therefore, does not concern the abstract admissibility of the sign, but compliance with the required criteria.
The first critical aspect is representation. By their nature, scents are difficult to fix in an objective and durable manner. The deposit of a sample does not guarantee long-term stability. A verbal description may be too generic. A chemical formula describes the substance, not the olfactory experience.
The abolition of the requirement of graphic representation has not eliminated this technical difficulty: the sign must still be represented in a clear, precise and verifiable manner.
The second aspect is distinctiveness. A fragrance may be registered as a trademark only if it is separable from the product’s function. If the scent performs a technical role or enhances the characteristics of the goods, it will hardly qualify for exclusive protection.
The scent must be perceived by consumers as an indicator of commercial origin, not merely as a product quality.
In the European context, an international classification of scents with unique codes was once envisaged, but the project did not lead to concrete implementation.
In the United States, the approach differs. The trademark office tends to place greater emphasis on actual use and consumer recognition, provided that the fragrance is not functional or purely descriptive. A well-known example is the distinctly recognizable lemon scent associated with printer and photocopier toner.
Within the European Union, however, protection of olfactory trademarks remains sporadic. Although the legal framework allows registration, a consolidated technical solution for stable and universally accepted representation has not yet emerged.
Data di pubblicazione: 24 Febbraio 2026
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