Our sense of smell (or ‘olfactation’ as it is technically described) is said to be the sense most intimately linked to our memories. There are certain distinctive smells that, without fail, trigger in us nostalgia for the halcyon days of childhood – the bleach-like whiff of chlorine after a day at the local pool, the waxy odour of Crayola crayons and, of course, the ‘sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough’ of Play-Doh.

Sniffing out a branding opportunity in our olfactory-based nostalgia, multinational toy maker Habsro Inc filed an application in February with the United States Patent and Trademark Office (“USPTO”) for the smell of its iconic malleable, putty-like toy Play-Doh. The filing is in respect of all ‘toy modelling compounds.’

Employing a description suitable of highly-trained sommelier, Hasbro’s filing describes the smell of Play-Doh as, you guessed it, 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.”

(Given this delightful combination of odours, no wonder this IP Whiteboard contributor spent as much time eating Play-Doh as playing with it).

To assist with its filing, a specimen container of Play-Doh containing the mouth-watering fragrance was submitted to the USPTO.

The nascent field of smell marks

We know what you’re thinking IP Whiteboard reader, something smells funny here – surely Hasbro can’t claim a monopoly over scent?

Believe it or not, scent marks are a thing. In Australia, section 17 of the Trade Marks Act 1995 (the “Act”) defines a trade mark as 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.’ The Act explicitly includes ‘scent’ in the definition of a sign (along with other non-traditional marks such as colours and shapes). As a result, scent marks are capable of registration as a trade mark in Australia.

The same tests apply to scent marks as they do to other, more traditional, marks. In particular, the registered scent must be capable of distinguishing the goods/services of the trade mark owner from the similar goods and services of other traders. The scent must not be functional or common to the relevant trade. As a result, the natural scent of a product (for example, perfumes or essential oils) or scents which are used to mask odours (which have a functional rather than distinguishing purpose) could not be registered as scent marks. One of the strongest grounds an applicant could press is acquired distinctiveness. Indeed, in its filing, Hasbro highlighted that the unique scent described above ‘has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use of the mark in commerce.’

Scent marks are not common in Australia. In fact, there is currently only one registered scent mark – the scent of ‘eucalyptus radiata’ for golf tees (this IP Whiteboard contributor has a few friends with unhealthy golf obsessions, but scented golf tees might be one step too far).  This mark was entered on the Register in 2009.

How do you describe a smell?

A major obstacle to registering a scent mark is ‘graphically representing’ the mark. Section 40 of the Act requires that an application for registration of a mark must be rejected if it cannot be represented graphically.   Section 27(3)(a) also states that any application for a mark must include a representation of the mark. Words and devices marks are by their essence graphic (either through symbols or letters), but scent is a relatively intangible concept.

This begs the question, how is an applicant meant to ‘graphically represent’ something as ephemeral as an odour?

The only available option is a verbal description of the smell. However, as IP Australia identifies in its Trade Marks Office Manual of Practice and Procedure, ‘one of the problems with attempting to describe a scent is that unlike shapes, colours, sounds or words, it is hard to represent a scent in a way which unambiguously clarifies its nature as it can’t be seen or heard’.

The result is that the applicant must describe the scent in as specific and accurate detail as possible. As the Trade Mark Office writes, ‘in terms of identity, the more that is left to the imagination, the less clarity there is when it comes to available forms of graphic representation.’ The reader can agree that Hasbro’s oddly-specific description certainly did not leave anything to the imagination.

In Australia, simply providing a chemical formula of the scent (or other ‘highly technical data’ such as ‘electronic nose’ analysis) will not suffice. This is because the graphical representation must be in a form that conveys information to the ordinary person allowing them to identify the trade mark. Although this writer is sceptical that his young self would have identified the smell of Play-Doh with quite the specificity of Hasbro’s filing (that is, when his nose wasn’t blocked), the description is still likely to satisfy this requirement given its use of lay, rather than technical, language or formulae.

Finally, Hasbro’s initiative in sending a sample of play-dough to the USPTO would not strictly be required in Australia (although we applaud the effort). According to IP Australia, samples do not need to be provided at filing but may be requested during the course of examination.

Is there a future for smell marks?

Hasbro’s application serves as a fragrant reminder that trade marks are capable of distinguishing goods and services without strictly being a traditional word or logo. However, given the evident difficulties involved in registering a scent mark, it remains to be seen whether other traders will catch a whiff of the opportunity to register scents in Australia.