The toy manufacturers Hasbro are seeking a US trade mark for the smell of Play-Doh, their specimen is none other than a container of Play-Doh. At present, within the UK and EU, it is almost impossible to register a scent mark. Ralf Sieckmann found this to his detriment (Ralf Sieckmann V Deutsches Patent Und Markenamt, C-273/00).
At present, all trade marks must be graphically represented, which means by way of images, lines or characters (however, this necessity of graphical representation will not be necessary if the UK implements Art 3 Directive 2015/2436). Sieckmann attempted to register a scent described as, “balsamically fruity with a slight hint of cinnamon” for various services with the following representations:
- chemical substance methyl cinnamate (cinnamic acid methyl ester)
- Samples can be obtained by laboratory X
- odour sample/described as balsamically fruity with a slight hint of cinnamon
It was held, for scent marks, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, or by the deposit of an odour sample or by a combination of those elements, as the representation must be: clear, precise, self- contained, easily accessible, intelligible, durable and objective (the “Sieckmann criteria”)
The Sieckmann criteria is essential for defining a trade mark, to determine the precise subject of protection, by creating a register that is accessible to all, with the need to perceive the sign in the same way, therefore, enabling it to function as a genuine indication of origin, with durability, as a registration which can be renewed for varying periods, and eliminating subjectivity in the process of identifying and perceiving the trade mark.
Therefore, using a chemical formula did not constitute sufficient representation, as few people would recognise the scent in the formula and it did not represent “the odour of a substance, but the substance as such”. The representation requirements for scent trademarks are not met by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of these elements.
Therefore, we need to discover new ways to make samples available in a way, that complies with the Sieckmann criteria, or the UK and EU could relax the criteria (e.g. intelligibility), or we could await new technologies for representing scents.
Prior to Ralf Sieckmann’s application, scent marks were registerable in the UK and EU, the strong smell of bitter beer was applied to flights for darts, a floral fragrance reminiscent of roses was applied to tyres, and the smell of freshly cut grass was registered in the EU for tennis balls.
However, in the US, they adopt a much broader approach than other jurisdictions. In the US scent marks have been successfully registered for Pina Colada scented ukuleles, bubble gum sandals, even minty pain relief patches!