Smells like child spirit

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It’s not Thursday anymore but it’s again time for a throwback.

Do you remember that colourful, weirdly smelling compound you kept using when you were a lovely child?

I am sure, you do – as your mother certainly does. Everyone has an artistic phase in their childhood and, generally, this is all about Play-Doh.

But time flies and soon you realize you are not made for the art business and become an accountant or, even worse, a lawyer…

Still, Play-Doh is there. It has been there since the1930s apparently and, I must admit, it is in quite good shape.

Well done to Hasbro’s founder and marketing team, indeed. But there is more behind the results and, surprisingly enough, it is all about law. And in fact, recently, the Hasbro company succeeded in obtaining a registration in, guess what, the “dough distinctive smell”.

Not the word, nor the colour or the package even – it’s so 2017 apparently. No, this registration is all about the smell of the Play Doh, which is described as “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.”

 Disgusting, isn’t it? Yes, but still it is a registered trademark.

 And in fact, as pointed out by Hasbro’s senior vice president “The scent of Play-Doh compound has always been synonymous with childhood and fun”. In other words: goodbye Mr Proust, Play-Doh is the new madeleine!

This is an unexpected success for Hasbro lawyers, considering that, at present, there are not many scent marks recognised by the US Patent and Trademark Office (USPTO). And in fact, following the Guidelines of the Office, for this purpose one has to demonstrate that “a fragrance serves no important practical function other than to help identify and distinguish a brand”. [1]

Still, despite the difficulties, in the course of the years there have been a number of scent marks registered in the US, ranging from bubble gum scents for sandals to pina colada scent to coat ukulele (more details available at the following link http://mentalfloss.com/article/69760/10-scent-trademarks-currently-recognized-us-patent-office)

And what about the EU then?

According to the Guidelines issued by the WIPO “It is currently not possible to represent smells in compliance with Article 4 EUTMR, as the subject matter of protection cannot be determined with clarity and precision with generally available technology”. The same applies to taste marks.

In other words, in Europe we would love to grant protection to this new (quite cool) distinctive sign but, on the other side, we are worried by the monopolies which may arise due to this. Plus, we are not sure of whether it would be possible for these new marks to pass the narrowness of the Sieckman criteria[2] (according to which a sign must be clear, durable, easily accessible, precise, self-contained, intelligible and objective). And in fact in Odeur de fraise mûre, (T-305/04), the Court, while denying the grant of registration for the smell of an artificial strawberry, justified its decision by saying that the description given (‘smell of ripe strawberries’) could refer to several varieties and therefore to several distinct smells. Precisely, the description was found neither unequivocal nor precise and did not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed.

So, what are the options available so far?

  1. Trademark protection to smells limited in scope: in the UK two trademark national registrations have already been granted. Namely, “dart feathers that smell like bitter beer” and “a floral fragrance/scent reminiscent of roses as applied to tyres” for road vehicles were successfully registered. How comes?

UK coolness apart, these positive findings are due to the narrow field of application of similar marks, whose effect on the competition is therefore likely to be limited. Such a reasoning might support the grant of registration in countries other than the UK, provided that the mark is applied for a limited category of services and goods[3].

In addition to this, new opportunities for protection might be opened by legal and trademark innovations (http://ipkitten.blogspot.it/2018/01/scents-and-trade-marks-eu-reform-of.html)

  1. Copyright protection to smells: in the EU smells protection by copyright law has been the object of a long and intensive debate. In particular, in 2006, two supreme courts had to rule on whether a perfume fragrance could be protected by copyright and the decisions came to opposite conclusions. In fact, while the French Court of Cassation decided that a perfume fragrance could not benefit from the protection afforded to intellectual works by copyright ( Bsiri Barbir v. Haarmann & Reimer case), just three days later, the Supreme Court of the Netherlands (Hoge Raad der Nederlanden) held that “the description given in Article 10 of the Copyright Act of what is to be understood as a ‘work’ within the meaning of that Act is general and does not rule out the inclusion of scents”. Therefore, at least in some countries, copyright might represent a valuable source of protection[4].
  2. … and to tastes?

Although copyright protection for tastes has never been granted under EU law, things might change in the light of a new referral made to the ECJ. And in fact the Dutch saga over the protection of Heks’nkaas cheese, started in 2015, is making its way to the Court of Justice of the European Union (CJEU), for guidance on whether EU law allows copyright protection in taste[5]. This ruling is particularly important for countries as the UK where copyright protection is based on a closed list system and, therefore, is more unlikely to arise.

[Thus, if you are a starred (or not) chef you’d better check this ruling out for the future. Meanwhile, be aware that your dish might still be protected as an artistic work, in some limited cases (more details at the following link http://ipkitten.blogspot.it/2016/03/a-big-meal-or-big-deal-subtle-line.html )]

[1] USPTO acknowledges the same: “The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” See U.S. Trademark Manual of Examining Procedure (TMEP) §1202.13.

[2] Ralf Sieckmann v Deutsches Patent- und Markenamt

[3] The same reasoning was applied when coming to colour marks. And in fact while registration was denied in Libertel, given the otherwise broad scope of protection, it was accorded for the colour yellow applied rubber tits for milking installations R0371/2009-2

[4] See also L’Oreal v Bellure, where the claim brought by L’Oreal against smell-alike perfumes producers was successful, although there is no protection for perfumes under UK law.

[5] http://www.ie-forum.nl/artikelen/vragen-aan-hvj-eu-over-de-auteursrechtelijk-bescherming-van-smaak-en-wat-de-eisende-partij-dient-te

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About Author

Federica Pezza is a trainee lawyer, specialising in EU and IP law, currently working for the legal department of British American Tobacco(BAT) in London. After graduating at University Federico II of Naples in 2015 with a comparative dissertation in EU law, focusing on Copyright developments in Italy and France, Federica recently completed an LLM in Intellectual Property Law with a Distinction at Queen Mary University of London. Before joining the trademark department of BAT, she gained experience in the law tech area by working in a law tech London based start-up. Federica is a registered journalist in Italy and a French and English speaker.

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