The Frontier of IP (Part 2)


Trade-marks traditionally protect visible brands – a design, word or slogan. The brand that is visible on packaging or advertising is like a tool to assist consumers so they know, when they consider a purchase, who stands behind the product or service. So why can’t these indicators or “tools” be non-visible? Scent marks have been registered or applied-for in other countries:

  • The EU: The EU permits scent marks as long as they can be described or depicted graphically.  OHIM, the office that handles registration of Community Trade Marks (CTM), has accepted the smell of fresh cut grass for tennis balls as an “olfactory mark” (Link to Decision (PDF)).
  • USA: Scent marks are capable of being registered, and there is no requirement to sumbit a drawing or graphical depiction of the mark.  The USPTO has accepted the scent of Plumeria blossoms for sewing thread and embroidery yarn, and apple cider scent or fragrance in association with office supplies.
  • Australia: Scent marks are registrable, though there is a requirement that a mark must be graphically depicted.  This can be satisfied with a written description of the scent and how it’s applied. In Australia, only one scent mark has been successfully registered: a eucalyptus scent for golf tees.
  • Canada: If you try to search for “scent marks in Canada”, you will find articles about woodchucks and timber wolves marking their territory. Currently scent marks are not registrable in Canada, due to the requirement that marks must be depicted visually. To get around this legal conceptual barrier to scent marks, an amendment to the Trade-marks Act would be required, which is not likely in the near future.

There are several problems associated with scent marks. First, they must (in many countries, including Canada) overcome the hurdle of visual or graphical depiction in the trade-mark application. Next, the scent mark must not reflect the natural scent or aroma of the product itself – for example, the scent of fresh-baked bread should not be registrable for bread products. And perhaps most importantly, scent marks suffer from an inherent subjectivity that is difficult to overcome: “fresh-cut grass” means something different to different people, even if you can get over the other legal hurdles of adequately depicting or describing the scent for the purposes of the application. How can the problem of trade-mark confusion be solved in light of this subjectivity, where, for example two brands of tennis balls have similar cut-grass scents applied to them?

In Canada at least, this is one frontier that we will watch from the sidelines.

Related Reading: Holograms & Other Nontraditional Trade-marks in Canada

Also, see this good overview of: Nontraditional Trade-Marks in Canada

Calgary – 07:00

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