Anyone with a young family will be all too familiar with the distinctive (and often ubiquitous!) smell of Play Doh and, recognising the importance of this, the brand owner Hasbro is attempting to register this smell as a trademark in the US. This raises questions about the concept of a trademark and how trademark owners can take steps to protect unusual aspects of their branding and advertising strategy which consumers use as a means of identifying the brand behind the products.
What is a trademark?
Before discussing the background to this particular case it is worth taking a step back and asking, what is a trademark? Typically we might think of this as a brand name or logo but as methods of communication, trends and technology evolve and consumers become more sophisticated, brand owners use a wider and wider range of brand assets to communicate their proprietary message.
In the context of the legal definition of a trademark, the current definition in the UK and EU, for example, is "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings." In simple terms this means a trademark can be anything which is represented in graphical form which can be used to identify the origin of goods or services. As you can see, when considering this, legal definitions like this in theory allow leeway for registration of unusual branding elements such as colours, smells or sounds to be protected rather than simple logos.
If an application for a trade mark is registered it provides the owner with a legal monopoly to use that mark and accordingly it is easy to see why Hasbro is taking steps to try and obtain a trademark registration so as to prevent competitors from mimicking the scent of its product.
Hasbro’s application and problems with protecting smell marks, especially in the EU
Hasbro’s application has not yet been accepted for registration and one of the main challenges when attempting to protect this kind of mark is defining the mark in a way which is sufficiently objective and precise. In this case Hasbro has defined the scent 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." It also deposited a sample of its Play Doh product.
It will be interesting to see if Hasbro is successful because the difficulty with smells in particular is that it is very difficult to come up with objective and universally understood definitions of what the mark is and to test how well known and distinctive it is. Put simply smells smell different for different people. In the UK and EU it is not possible to deposit samples of product scents and under current practice it has effectively been impossible to protect smell marks. The impact of this is that brands such as L’Oréal have faced serious challenges in preventing the sale of "smell-alike" products by third parties.
Other examples of non-traditional marks registered and changes to the law
Despite these challenges there are a number of examples of successful registrations of unusual marks in various parts of the EU such as colours (used in respect of brands such as Cadbury and Orange), product shapes (such as Coca-Cola bottle designs) and even store layout designs (in the case of Apple’s store layout). It is also the case in the EU that changes to the law are soon to come into force which will remove the requirement for "graphical representation." For sound and smell marks in particular this could help increase chances of successful protection by brand owners in future. As such it is clear that policy makers recognise the need for the law to catch up with changes in brand owners’ methods of communication as the definition of trademarks changes over time.
Recommendations for brand owners and their advisors
Protection of non-traditional brand assets is often not easy but the key for brand owners is to recognise that it is possible in some circumstances. As such and as early as possible in planning of advertising campaigns, brand refresh, new product launch or rebranding activity, brand owners and their agencies should bear in mind the possibility of trademark protection for associated assets, no matter how unusual, and seek advice about protection before launch. Likewise, and by the same token, brand owners should recognise the possibilty of protection of such assets by third parties or competitors and seek advice to avoid conflicts arising.
John Ferdinand is a Chartered UK and European trade mark attorney at Marks & Clerk