Get your hands off my smell!

June 5, 2018, By

(IMAGE: AFP – GETTY)

A unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough

Nope, not a wine or a cheese. This is the unique smell of Play-Doh …

At least according to Hasbro. And the US Patents and Trademarks Office agrees. At the beginning of the year, the company submitted an application to the USPTO to register Play-Doh’s unique smell and last month the USPTO confirmed that the application had been approved.

In addition to the description set out above, a container of Play-Doh was sent to the USPTO as part of the application process.

Hasbro is a multinational toy company, the manufacturer of the Play-Doh toy putty since 1956 and the owner of the Play-Doh trade mark portfolio.

Briffa comment

Trade marks for smells (or olfactory marks) are rare, but not unheard of. The first smell mark, registered back in 1990, was for a flowery scent used on yarn. Smell marks are rare for a few reasons. One difficulty is that the smell must be distinctive in order to be registrable (which usually means that distinctiveness must have been acquired through use/exposure in the market over a long period of time). Another difficulty is that the smell must be capable of description and, even if a very detailed and precise description is provided, a smell may be perceived differently by different people.

Trade marking smells in the UK and the EU is even rarer. There have been applications to trade mark smells in the EU in the past. Once such application was for a pure chemical compound which was said to be “balsamically fruity with a slight hint of cinnamon” and another such application was for cosmetic products which was said to be “the smell of ripe strawberries”. In the former case, it was held that because the trade mark was not capable of being represented graphically, the application could not proceed to registration (even though the applicant had submitted a description and sample of the smell). In the latter case, it was held that the smell of ripe strawberries would vary depending on the variety and therefore the description was not sufficient precise to allow for trade mark protection to be granted (if the description was unclear, the scope of the trade mark monopoly would be unclear).

Trade marks for smells in the UK and the EU may be easier to acquire in the future. Last year, an amendment to EU trade mark law provided that it was no longer strictly necessary that trade marks be capable of being represented graphically. The new law provides instead that the trade mark must be capable of being represented in a manner which allows the clear and precise subject matter of the trade mark to be determined by the relevant authorities and the public. The removal of the graphical representation requirement may make trade marks for smells and other less common trade marks more accessible to EU trade mark applicants. The corresponding UK provision is due to be changed in 2019.

A key take-away point the Play-Doh case is that there are a broad range of potential ‘brand identifiers’ which customers may use to find your products and which may therefore be valuable and worth protecting. Most people know that words, logos and taglines are protectable as trade marks. However, most people are less familiar with shapes, colours and sounds as trade marks. When assessing the valuable IP in your business (including your trade mark portfolio), it is always advisable to consider all the potential ‘brand identifiers’ that you may wish to protect.

Briffa advises on all aspects of contentious and non-contentious trade mark law and practice. We offer free 30-minute consultations to all new clients. Please contact us on [email protected] or 020 7288 6003 if you would like to set up a call or a meeting.

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