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From Playgroup To The Court Room - Play-Doh Gets Legal

30/03/2017 14:14
Bunwit via Getty Images

What's in a smell? Well according to Play-Doh rather a lot.

This month US toy giant Hasbro filed a trademark application to protect the smell of Play-Doh. Hasbro say the smell, which has been used since 1955, is "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."

Hasbro's trademark counsel, Catherine M.C. Farrelly described the Play-Doh scent as "one of the best-known, most unique and instantly recognizable scent trademarks in the world, and has been serving as a trademark for decades".

Probably all of us grew up playing with the clay like moulding dough, and will immediately recognise the smell, transporting us straight back to our toddler days. With this in mind Play-Doh are wise to be wary of competing manufacturers, and others, who may well attempt to replicate the iconic scent.

Applying to register a trademark for the scent would appear to be a smart move for Hasbro. A registered mark will strengthen the company's intellectual property rights in the mark, will act as a deterrent to others and will make it easier for Hasbro to enforce its rights against those who may attempt to imitate the scent.

However, the process of registering scent marks is not at all straight forward. The primary difficulty is that scents are defined subjectively and are therefore open to interpretation. They are also very difficult to represent graphically, for the purposes of identifying what it is about the scent that is distinctive and therefore capable of acting as a badge of origin.

Policing infringement of smell trademarks can be more difficult than with other more traditional types of trade marks. For word marks, trademark owners can order watch services that help them identify attempts to register infringing or potentially infringing marks. Those services search through international trademark registers, the internet, business directories and other sources for identifying confusingly similar marks.

But of course, similar services simply don't exist for smell, so companies who hold scent marks generally only find out about competing or infringing scents when the matter is brought to their attention, either via extensive research, or more typically by chance.

As a result scent marks are much less common than trademarks on words or logos. However they do exist and have existed on the US federal trademark register since 1990. A slightly bizarre example includes U.S. ukulele company Eddy Finn Ukulele Co. who successfully petitioned for a trademark on its scent that makes its instruments smell like piña coladas.

However it's a sector of the IP world that is still fairly new. Of the millions of registered trademarks around the globe, relatively few pertain to scents.

Trademarked scents are even rarer outside of the U.S. A European Court of Justice decision in 2002 effectively closed the doors on the registration of European wide scent trademarks - the last of which was for fresh cut grass and lapsed in 2006. There are a small number of scent trademarks on the UK register but the extent to which their owners can police and enforce them is questionable. As yet no scent has European Union-wide protection and in the EU trademarks must be capable of being graphically represented, calling into question whether it is even possible to trademark a scent.

Scent mark registrations are likely to remain rare for the foreseeable future, largely down to the sheer number of legal hoops a company has to jump through to get them registered and the reality that most applications get denied. However, the fact that a large global corporation like Hasbro is throwing its hat into the ring will certainly mean that many more companies will try as they attempt to differentiate themselves in a crowded marketplace. Indeed, the publicity Hasbro could get because of registering a rare scent trademark may have been one of its primary reasons for filing the application.

IP lawyer Wayne Beynon is head of Intellectual Property and a Partner at Cardiff & London based law firm Capital Law.

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