Play-Doh: the smell of modeling clay recorded

Last May, the US Patent and Trademark Office (USPTO) registered a new smell: the one from the Play-Doh. Modelling clay, invented in 1956, thus joins the very small circle (a dozen to date in the United States) of olfactory brands. The registration of a smell raises legal and technical questions. Questions that are highly disruptive to the European offices.

The requirement of distinctiveness of the olfactory mark

As with any brand, the smell will only be recorded if it is distinctive.. The USPTO thus denies trademark protection to utilitarian odours. For example, it is not possible to register a fresh lemon or pine scent for products with a cleaning function, such as an air freshener. The mark has a function of identifying goods and/or services: the smell must therefore "represent" the mark itself. This is why perfume companies use patents to protect innovative odours. To register a smell trademark, the USPTO generally requires proof that consumers make the connection between the product and the smell. The applicant companies provide the Trademark Office with studies proving the existence of this link. In order to register the Play-Doh trademark, Hasbro was therefore required to prove the distinctiveness of the smell of the modelling clay. But the particular smell of Play-Doh would not have been enough for its recording in Europe. Hasbro would have had to overcome the requirement of graphic representation, which is an obstacle to scent marks.  

The condition of graphic representation as a blockage in Europe

Olfactory brand: an essential graphic representation

This condition is mentioned in Article 2 of the European Directive of 21 December 1988. This article provides that any sign may constitute a trademark provided that it is graphically represented, "in particular by means of figures, lines or characters, in a manner which is clear, precise, complete in itself, easily accessible, intelligible, durable and objective". To the question: "can you register a smell as a trademark? », the INPI answers ...the signs of smell or taste must be [...] represented graphically so that other people can determine their purpose and extent." As this condition is technically very difficult to meet, it is not currently possible to register an olfactory trademark in France.  

A different appreciation of graphic representation in Europe and the United States

The olfactory trademark Play-Doh could be registered thanks to the following textual description: "sweet, slightly musky. Close to vanilla. Notes of cherry. Natural odor of salty bread dough. » However, the Court of Justice of the European Union (CJEU) would not have accepted such a deposit. The Court considers that descriptions of odours using words lack precision and objectivity. It also rejects descriptions by means of chemical formulas (not sufficiently intelligible) and those by means of sample deposits (the latter not being durable).  

Towards a future acceptance of olfactory brands in Europe

In December 2015, the European Parliament adopted Directive 2015/2436 as part of the "brand package" reform. This new text led to the removal of the requirement for the graphic representation of trademarks. This removal should thus pave the way for other identification systems. The European offices will therefore end up accepting so-called non-traditional trademarks, and in particular olfactory trademarks. But as we have seen, the INPI still refuses these new marks for the time being. However, even if the French Office were to overcome the difficulties associated with the registration of these marks, they remain extremely rare. the appeal of word marks. In fact, of the millions of brands active in the United States, only 13 are made up of smells.