Scent marks & non traditional trademarks

Earlier this year Hasbro was granted trademark protection for the smell of its Play-Doh clay by the US trademark office. The mark had been filed for: 'a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones or cherry, combined with the smell of a salted, wheat-based dough'. The product is made with this characteristic scent since 1956 and it is sometimes referred to in advertising too (campaign 2013: Stop and Smell the PLAY-DOH). Hasbro shows (with a great amount of evidence) that the fragrance has acquired distinctiveness and therefore is granted trademark protection. But would this also work in Europe?

For almost a year, non-traditional trademarks can be filed at the European trademark authorities. For example holograms, patterns, film-clips and multimedia marks. Last year our intern Romy has conducted research on this and wrote her bachelor’s thesis on the subject. Her thesis shows that, in addition to pattern marks, film-clips with sound and video are particularly popular. However, scent marks are not yet available. The reason for this is (put shortly) that an odour can’t be described and displayed specifically enough. The European Court has decided in a similar case that only a description in words and a chemical formula would be insufficient. It will therefore take some time before scent marks are accepted in the EU. However, for patterns, movie-clips etc. the doors are wide open.

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?