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Smells like victory: registering scent trade marks in Australia – Trademark



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Unbeknownst to many, a scent can be registered as a
trade mark. In Australia, although uncommon (currently there are
only two registered scent trade marks on the Australian Trade Marks
Register), scents can qualify for registration if certain
requirements are met.

Below, we explore the requirements for the registration of scent
trade marks in Australia, offer some examples of successful
applications and outline the types of traders or products that may
benefit from registration of a scent trade mark.

What are the requirements?

Under the Trade Marks Act 1995 (Cth) (the
Act), a trade mark is ‘a sign used, or
intended to be used, to distinguish goods or services dealt with or
provided in the course of trade by a person from goods or services
so dealt with or provided by any other person’.1 A
‘sign’ is defined in the Act to include a
scent.2

There are various requirements that must be satisfied in order
to achieve registration of a scent trade mark, most of which are
common with all other kinds of trade marks. Arguably, the most
important requirement is that the scent must be capable of
distinguishing one’s goods or services from those of other
traders. Put simply, the scent must be something unusual or
distinctive for the goods or services to which they are applied,
and must have been added to identify the source of those goods or
services. The scent must not be a natural or expected
characteristic of the product itself (for example, the scent of
cedar arising from a product made of cedar wood) and cannot serve a
functional purpose of masking a scent (for example, lemon scented
cleaning products). Notably, in 1994, Chanel was unsuccessful in
seeking to register a scent trade mark with the UK Intellectual
Property Office for its well-known ‘Chanel No 5’ fragrance
(because the scent sought to be registered was effectively the
product itself).

One must also consider whether traders would want to
legitimately use the scent in the ordinary course of business, such
as a scent common to a trade which makes a product more attractive
(for example, herbal scents for soaps and shampoos). These are
generally scents which are too common to an industry to allow one
company trading in that industry to monopolise their use. A scent
for which trade mark registration is sought must function to
distinguish the claimed goods or services (i.e. function as a trade
mark) to achieve registration. An applicant will likely be
unable to register a scent trade mark where the product is packaged
so that the scent is only apparent to the consumer after purchase,
because the scent is not being used as an identifier of trade
source for prospective purchasers.

Finally, the scent must be capable of graphic representation. In
other words, it must be capable of representation by a written
description of both what the scent is and how it is to be used in
respect of the claimed goods or services. This ensures that the
scent can be depicted on the Trade Marks Register and can be
identified by other traders or consumers.

An example of a scent that would not be registrable as a trade
mark is the scent (or nose) of a wine, as a wine’s nose is not
used as a trade mark to distinguish the
wine. Moreover, the scent of a wine will commonly change as the
wine ages. Clearly, a registered trade mark (scent or otherwise)
cannot change over time; what is registered must remain
unchanged.

Examples of successful scent trade mark applications
















Country

Trade Mark No.

Scent

Goods/Services

Owner

Australia

1241420

Eucalyptus Radiata

Golf tees

E-Concierge Australia Pty Ltd

Australia

1858042

Cinnamon (being principally Cinnamaldehyde)

Non-wood based furniture made principally of foam, steel,
plastics and melamine-coated particle board

NorvaNivel Pty Ltd

Australia

700019 (this trade mark was accepted but never
registered)

Strong smell of beer

Darts

Unicorn Products Limited

United States

5467089 (Principal Register)

Scent of sweet, slightly musky, vanilla fragrance, with
slight overtones of cherry, combined with the smell of a salted,
wheat-based dough

Toy modelling compounds

Hasbro, Inc.

United States

4754435 (Principal Register)

Bubble gum

Shoes, sandals, flip flops, and accessories, namely, flip
flop bags

Grendene S. A.

United States

4966487 (Supplemental Register)

Chocolate

Retail store services featuring jewellery, gems, watches,
etc.

Le Vian Corp.

Although the rules and requirements in the United States in
relation to trade marks are slightly different to those in
Australia, it is notable that Hasbro Inc. was able to successfully
register the Play-Doh scent as a trade mark. This registration was
controversial, with some of the arguments against its acceptance
being that the scent’s description is not precise or objective
(as the scent is not recognisable from the description) and that
the scent may be considered as merely a natural component of the
product. Further, the scent may be viewed as not operating as a
trade mark because it is only apparent to consumers after
purchase.

In successfully overcoming the United Stated Patent and Trade
Mark Office’s objections, Hasbro Inc. put on evidence as to
acquired distinctiveness regarding its use of the scent, sales and
advertising by reference to the scent, and media and social media
coverage relating to the scent.

Objections to trade mark applications of this kind are not
uncommon in Australia, in that applications are sometimes rejected
on the basis that there was no evidence that an applicant is using
the mark as a trade mark. This can be overcome with evidence that
the applicant has a clear intention to use (and had in fact used)
that mark as a trade mark, and that it has adopted that mark as an
identifier and corporate livery identifying the applicant.

It is possible that a company could have a scent that would in
fact be registrable as a trade mark, but unknowingly takes steps
which may impede this possibility. For example, a retail chain may
have a registrable trade mark in a specific scent it uses to
distinguish its stores, which functions as a trade mark and is
capable of description. However, if the chain was to produce a
candle fragranced with that scent, it may be harder to register as
the scent is now a result of a product itself. Put differently, the
scent of the candle is a natural or expected characteristic of the
product.

Thinking of registering your scent?

A number of companies could benefit from registration of scent
trade marks. These include:

  • hotels that use distinctive scents in their lobbies and
    communal areas;

  • car companies that use distinctive scents in the interior of
    their cars (which do not naturally arise from the car’s
    materials);

  • retail companies that use distinctive scents in their stores or
    applied to their goods (such as clothing or shoes); and

  • any other company that uses a scent to distinguish its goods or
    services.

If you are considering registering a scent as a trade mark, you
will have the best chances of success if:

  • the scent functions as a trade mark;

  • the scent is a simple scent that can be easily described by
    graphical representation – generic smells and simple
    descriptions, which can easily evoke a specific scent in the mind
    of the reader, are better (this is opposite to word and image
    marks, where more distinguishing features are better); and

  • the scent is capable of distinguishing the goods or services
    and is not usually associated with that particular type of goods or
    services.

Footnotes

1Trade Marks Act 1995 (Cth), s
17.

2 Trade Marks Act 1995 (Cth), s
6.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.





    Lawyers Weekly
Law firm of the year
2021                  

Employer of Choice for Gender Equality
(WGEA)



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