Unlikely victory for non-conventional trademarks in the US

As the United States Patent and Trademark Office (USPTO) grants a trademark right to Play-Doh to protect its distinctive smell, Novagraaf’s Trecina Surti looks at the challenges of registering scent marks in the EU.

Non-conventional trademarks, such as scent trademarks, are notoriously difficult to register. This is due to the requirement that a trademark is to provide consumers with a clear indication as to the origin of the goods and services, which is easier to achieve with word or figurative (logo) trademarks.

Many people are familiar with the distinctive smell of Play-Doh, perhaps from their childhood or as a parent, but is the smell distinctive enough to function as a trademark? The USPTO recently found that it was, and accepted a trademark application by manufacturer Hasbro to protect the scent of Play-Doh, which has been described as ‘a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.’ A tub of Play-Doh was submitted into evidence, along with substantial proof that Play-Doh had acquired a distinctive scent through long-standing use.

Does this have an effect on UK and EU law?

The simple answer here is no. When it comes to non-traditional trademarks, the UKIPO and EUIPO are generally stricter in their approach, and registering a scent trademark is particularly difficult, due to the requirements that the trademark must be: ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’ (Sieckmann v German Patent and Trademark Office). A scent trademark will always have an element of subjectivity, and thus it is likely that it will always fall down at this hurdle. However, it will be interesting to see if Hasbro attempts to register an EU trademark to protect the scent of Play-Doh in the near future.

Trecina Surti is a Trainee Trademark Attorney at Novagraaf in London

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