We were very interested in this recent article in The Independent concerning an application by Hasbro, Inc. to register the smell of Play-Doh as a trade mark.

The application was lodged at the US registry (USPTO). Filed in respect of ‘toy modelling compounds’, the application names the mark ‘Non-Visual Play-Doh Scent Mark’ and describes it more specifically 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’. A container of Play-Doh was submitted as a specimen. The application claims first use of the mark in 1955 and that the mark has become distinctive of the product though the extensive use by Hasbro. It will be sometime before we know if the application will succeed and reach grant.

Smells are of course powerfully evocative – and smells associated with childhood (as the smell of Play-Doh is for many) particularly so. Smells also form part of certain product experiences and the distinctive character of certain brands. And yet, for many, smells are not obvious brand elements. Certainly, smells are well down the list of elements for which registered protection is usually sought: below traditional marks such words and logos and below other non-traditional marks such as colour, shape and even sounds.

In the EU, both case law and legislative restrictions (in particular the requirement that a registrable sign be represented graphically) bear this out. The key requirement for registrability is that the sign should, in and of itself, be capable of distinguishing the goods of one party from those of another. Smell marks are not specifically mentioned in the legislation but neither are they specifically excluded. There are some olfactory marks on the registers but the hurdles to registration are high given the very nature of smell and current case law on topics such as how the public perceives non-traditional marks and how distinctiveness acquired through use of a non-traditional sign may be proved.

Things may change in the EU following the imminent removal of the requirement for graphical representation on 1 October 2017 (see EUIPO summary and our blog series on EU trade mark reforms). While the nature of smell means it will always be difficult to protect olfactory marks, it is important for brand owners always to consider all of the elements of which their brand is composed, even – and especially – if these are out of the ordinary.