Smells like victory: registering scent trade marks in Australia - Trademark

Unbeknownst to many, a scent can be registered as a trade mark. In Australia, although uncommon (currently there are only two registered scent trade marks on the Australian Trade Marks Register), scents can qualify for registration if certain requirements are met.

Below, we explore the requirements for the registration of scent trade marks in Australia, offer some examples of successful applications and outline the types of traders or products that may benefit from registration of a scent trade mark.

What are the requirements?

Under the Trade Marks Act 1995 (Cth) (the Act), a trade mark is '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'.¹ A 'sign' is defined in the Act to include a scent.²

There are various requirements that must be satisfied in order to achieve registration of a scent trade mark, most of which are common with all other kinds of trade marks. Arguably, the most important requirement is that the scent must be capable of distinguishing one's goods or services from those of other traders. Put simply, the scent must be something unusual or distinctive for the goods or services to which they are applied, and must have been added to identify the source of those goods or services. The scent must not be a natural or expected characteristic of the product itself (for example, the scent of cedar arising from a product made of cedar wood) and cannot serve a functional purpose of masking a scent (for example, lemon scented cleaning products). Notably, in 1994, Chanel was unsuccessful in seeking to register a scent trade mark with the UK Intellectual Property Office for its well-known 'Chanel No 5' fragrance (because the scent sought to be registered was effectively the product itself).

One must also consider whether traders would want to legitimately use the scent in the ordinary course of business, such as a scent common to a trade which makes a product more attractive (for example, herbal scents for soaps and shampoos). These are generally scents which are too common to an industry to allow one company trading in that industry to monopolise their use. A scent for which trade mark registration is sought must function to distinguish the claimed goods or services (i.e. function as a trade mark) to achieve registration. An applicant will likely be unable to register a scent trade mark where the product is packaged so that the scent is only apparent to the consumer after purchase, because the scent is not being used as an identifier of trade source for prospective purchasers.

Finally, the scent must be capable of graphic representation. In other words, it must be capable of representation by a written description of both what the scent is and how it is to be used in respect of the claimed goods or services. This ensures that the scent can be depicted on the Trade Marks Register and can be identified by other traders or consumers.

An example of a scent that would not be registrable as a trade mark is the scent (or nose) of a wine, as a wine's nose is not used as a trade mark to distinguish the wine. Moreover, the scent of a wine will commonly change as the wine ages. Clearly, a registered trade mark (scent or otherwise) cannot change over time; what is registered must remain unchanged.

Examples of successful scent trade mark applications

_Country	_{Trade Mark No.}	_Scent	_{Goods/Services}	_Owner
_Australia	_1241420	_{Eucalyptus Radiata}	_{Golf tees}	_{E-Concierge Australia Pty Ltd}
_Australia	_1858042	_{Cinnamon (being principally Cinnamaldehyde)}	_{Non-wood based furniture made principally of foam, steel, plastics and melamine-coated particle board}	_{NorvaNivel Pty Ltd}
_Australia	_{700019 (this trade mark was accepted but never registered)}	_{Strong smell of beer}	_Darts	_{Unicorn Products Limited}
_{United States}	_{5467089 (Principal Register)}	_{Scent of sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough}	_{Toy modelling compounds}	_{Hasbro, Inc.}
_{United States}	_{4754435 (Principal Register)}	_{Bubble gum}	_{Shoes, sandals, flip flops, and accessories, namely, flip flop bags}	_{Grendene S. A.}
_{United States}	_{4966487 (Supplemental Register)}	_Chocolate	_{Retail store services featuring jewellery, gems, watches, etc.}	_{Le Vian Corp.}

Although the rules and requirements in the United States in relation to trade marks are slightly different to those in Australia, it is notable that Hasbro Inc. was able to successfully register the Play-Doh scent as a trade mark. This registration was controversial, with some of the arguments against its acceptance being that the scent's description is not precise or objective (as the scent is not recognisable from the description) and that the scent may be considered as merely a natural component of the product. Further, the scent may be viewed as not operating as a trade mark because it is only apparent to consumers after purchase.

In successfully overcoming the United Stated Patent and Trade Mark Office's objections, Hasbro Inc. put on evidence as to acquired distinctiveness regarding its use of the scent, sales and advertising by reference to the scent, and media and social media coverage relating to the scent.

Objections to trade mark applications of this kind are not uncommon in Australia, in that applications are sometimes rejected on the basis that there was no evidence that an applicant is using the mark as a trade mark. This can be overcome with evidence that the applicant has a clear intention to use (and had in fact used) that mark as a trade mark, and that it has adopted that mark as an identifier and corporate livery identifying the applicant.

It is possible that a company could have a scent that would in fact be registrable as a trade mark, but unknowingly takes steps which may impede this possibility. For example, a retail chain may have a registrable trade mark in a specific scent it uses to distinguish its stores, which functions as a trade mark and is capable of description. However, if the chain was to produce a candle fragranced with that scent, it may be harder to register as the scent is now a result of a product itself. Put differently, the scent of the candle is a natural or expected characteristic of the product.

Thinking of registering your scent?

A number of companies could benefit from registration of scent trade marks. These include:

hotels that use distinctive scents in their lobbies and communal areas;
car companies that use distinctive scents in the interior of their cars (which do not naturally arise from the car's materials);
retail companies that use distinctive scents in their stores or applied to their goods (such as clothing or shoes); and
any other company that uses a scent to distinguish its goods or services.

If you are considering registering a scent as a trade mark, you will have the best chances of success if:

the scent functions as a trade mark;
the scent is a simple scent that can be easily described by graphical representation – generic smells and simple descriptions, which can easily evoke a specific scent in the mind of the reader, are better (this is opposite to word and image marks, where more distinguishing features are better); and
the scent is capable of distinguishing the goods or services and is not usually associated with that particular type of goods or services.

Footnotes

¹Trade Marks Act 1995 (Cth), s 17.

² Trade Marks Act 1995 (Cth), s 6.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.