Issue 85
  January 2018
Contents:
 

Scammers jailed

>  
 

Scandalous marks

>  
 

Spring Team Meeting

>  
 

New study on GIs

>  
 

IP Key China

>  
 

News from EUIPO

>  
 

Field Notes: Play-Doh

>  
 

New GI/TSG emblem in Turkey

>  
 

TM changes in Argentina

>  
 

Hague Workshop and Social Media Webinar

>  
 

Hague Agreement developments

>  
 

Media Roundup

>  
 
Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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Scammers jailed over misleading invoices

Fraudsters in Sweden have been sentenced to prison for their role in sending misleading invoices to EUTM owners using the letterhead “OMIH”, in a case in which MARQUES gave evidence.

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Scandalous marks: a global guide

In connection with the well-received presentation at last year's Annual Conference, the MARQUES IP Emerging Issues Team has compiled a table showing rules on immoral and scandalous marks in 39 countries. Kate Swaine and Laetitia Lagarde introduce it.

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Book now for Spring Team Meeting

The 16th MARQUES Annual Team Meetings will take place on 8 and 9 March 2018 in the Gran Hotel Miramar, Paseo de Reding, 22, 29016 Málaga, Spain. Booking is now open for Team and Council members.

Read More >>

New study on GIs

 

IP Key China project to support EU firms in China

A study on the ‘Protection and Control of Geographical Indications for Agricultural Products in the EU Member States’ was published by the European Observatory on Infringements of Intellectual Property Rights in December.

 

IP Key China, launched on 17 January, aims to strengthen and support the IP system in China through specialised collaboration with the EU.

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Latest news from EUIPO

Recent announcements from EUIPO include the launch of the User Satisfaction Survey, cooperation initiatives, JPO records being added to DesignView and new seminars and webinars.

Read More >>

Field Notes from the Outer Borders: Play-Doh applies for rare smell mark in US


In the latest in its series of Field Notes concerning unusual trade marks, Janet Satterthwaite of the IP Emerging Issues Team looks at Hasbro’s attempt to register the distinctive smell of a can of Play-Doh as a trade mark.


Every American who grew up in the mid-20th century or later knows that special smell of a newly opened can of Play-Doh, the smell of a virgin cylinder of colourful dough with endless possibilities ahead.

Hasbro, the US-based toy giant that owns the Play-Doh brand, has applied to register that smell with the USPTO. Application number 87335817, filed in March, 2017, is titled “NON-VISUAL PLAY-DOH SCENT MARK”. The mark description in the application is “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough”.

But we all know it as, simply, the smell of Play-Doh.

A use-based application in the US must provide a specimen of use of the mark in commerce, so Hasbro submitted a can of Play-Doh for the examiner to sniff.

The examiner issued an office action in May 2017, refusing registration. First, he said that the smell was a non-distinctive feature; that lots of toy moulding compounds have scent, and that the purpose of the scent was to make the goods appealing, not as an indicator of source. Under the doctrine of aesthetic functionality, a feature is functional because it makes the product more desirable.

The second ground for refusal was that Hasbro had not provided enough evidence that the mark had become distinctive, because an aspect of a product design, as opposed to packaging, must have demonstrated acquired distinctiveness (“secondary meaning”) before it can be registered or protected as a mark.

Hasbro responded with arguments and reams of evidence of the distinctiveness of the smell mark, including, for example a STOP AND SMELL THE PLAY-DOH advertising campaign, and articles referring to the “beloved, nostalgic, and readily-identifiable PLAY-DOH scent”.

The examiner has not yet reacted to this submission.

The Play-Doh smell is so well known that a US perfume company issued a Play-Doh fragrance. The ad copy reads: “When you open a can of PLAY-DOH compound, you are instantly transported back to childhood. What better way to celebrate the 50th birthday than by bottling the scent for adults everywhere to enjoy as a reminder of their youth.”

This is not the only smell mark applied for in the USA, but there are very few marks where the applicant has convinced the Trademark Office that the smell is an indicator of source and not functional. For example, in 2015, a Brazilian company registered the “scent of bubble gum” for shoes, sandals and flip flops, and in 2016, Le Vain Corp, of the USA, registered the scent of chocolate for “retail store services featuring jewelry, diamond jewelry, gemstone jewelry, gems, watches, rings, earrings, bracelets, bangles, cufflinks, necklaces, pendants, jewelry pins and consumer goods; trade show services, namely, kiosks and display cases for the presentation and sale to others of jewelry, diamond jewelry, gemstone jewelry, gems, watches, rings, earrings, bracelets, bangles, cufflinks, necklaces, pendants, jewelry pins and consumer goods”.

Verizon, the cell-phone carrier, registered 4618936 in 2014 for the “flowery musk scent” used in its retail stores.

One difference between these marks and the Play-Doh mark is that one does not experience the smell until after the purchase, when the can is opened. One wonders if that will make a difference.

A European take

David Fyfield of the IP Emerging Issues Team provides the EU take on this: “Despite the popularity of Play-Doh in Europe, Hasbro would have an even trickier task to register its smell as a European Union trade mark. Although it is no longer necessary for signs to be capable of being represented graphically to qualify as an EUTM, the EUIPO is still of the view that there is no generally available technology that is capable of representing a smell with sufficient clarity and precision for it to be registerable.”

Janet Satterthwaite is a Partner at Potomac Law Group, Washington DC. David Fyfield is an Associate at Charles Russell Speechlys LLP in London.

Play-Doh photo by Nolan Williamson via Flickr

New GI/TSG emblem in Turkey

 

Big trade mark changes proposed in Argentina

Özlem Fütman of the MARQUES GI Team explains the new rules on labelling traditional specialities guaranteed and geographical indications in Turkey.

 

Emergency Decree No 27/2018 includes substantial amendments to the Trademark Law designed to shorten prosecution and simplify opposition, cancellation for non-use and nullity procedures. Marco Rizzo Jurado explains.

Read More >>   Read More >>

Coming soon: Hague Workshop and Social Media/Marketplaces Webinar

MARQUES will host the next in its series of Hague Agreement workshops in Copenhagen on 15 March, and there will be a webinar on protecting IP rights in social media and online marketplaces on 29 March.

Read More >>

Latest Hague Agreement developments

 

MARQUES Media Roundup

WIPO has published information regarding the Hague Agreement’s application in Russia and Spain.

 

The MARQUES Class 46 and Class 99 blogs include the latest news and analysis of decisions from the CJEU and national courts, legislative developments and upcoming events. Sign up to receive email alerts.

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