Getting a sense of non-traditional trade marks
Do you automatically associate certain smells, colours, tastes and sounds with a particular product or brand? Marketing specialists would like this to be the case and are increasingly attempting to register such characteristics as trade marks. But just how far can trade mark registrations be used to protect such lucrative marketing strategies?
There is a long list of both successful and unsuccessful attempts to register various non-traditional trade marks. The Australian tennis player Lleyton Hewitt had his 2007 trade mark application for his “C’mon” gesture rejected on the basis that it was not unique – records of its use by another athlete dated back to the 1980s. Lamborghini, on the other hand, have a successfully registered trade mark of a moving image of car doors that open upwards. Furthermore, in terms of sounds, the Metro-Goldwyn-Mayer studios’ “Leo the Lion” roar was successfully trademarked by MGM, as was the Intel Corporation jingle along with Harley-Davidson’s distinctive V-twin engine sound. Other registered non-traditional trade marks include Tiffany & Co’s ownership of the colour “robin’s egg blue” in relation to its boxes and bags and the 2012 confirmation that Christian Louboutin was entitled to protect the red colour used on the sole of its shoes.
Registering scents and smells as trade marks has been a recent topic of discussion as a result of an application by the American multinational toy and board game company, Hasbro, to register the smell of Play-Doh as a trade mark. Hasbro have been the official owners of Play-Doh since 1991 and describe the product’s ‘unique’ smell as “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.”
The first successful application in relation to trade marking scents related to a flowery scent used on yarn. To obtain registration, applicants must be able to visually represent the scent and prove it to be distinctive from the product itself. The written description, therefore, must be so precise that the smell cannot be confused with any other. An added complication is the subjectivity by which individuals assess smells. What may smell a certain way to one person may be subtly different to another depending on their own experiences and associations. Furthermore, the distinctiveness of a scent mark must not result from the essence of goods themselves. For example, an application to register Chanel No. 5 perfume in the UK in 1994 was rejected due to the fact that the scent of the perfume made up the very core of the product.
Whether or not Hasbro are successful in their bid to register the smell of Play-Doh as a trade mark remains to be seen. It is notable, however, that many smell marks have passed the distinctiveness test and have subsequently been registered. These include a Dutch company’s description of newly mown grass in relation to their tennis balls, a UK registration for darts with a description of “the strong smell of bitter beer” and a “floral fragrance/smell reminiscent of roses as applied to tyres.”
Moving forward we will, without doubt, continue to see increasing numbers of non-traditional trade mark applications as the intellectual property world seeks to keep up with developing business and marketing strategies. If you feel that your business has a distinctive name, logo or even characteristic it is worth getting in touch with us at BPE to discuss ways in which you can protect your increasingly valuable brand.
These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.