Internet Explorer 11 (IE11) is not supported. For the best experience please open using Chrome, Firefox, Safari or MS Edge


Trade marks that sting the nostrils, in a good way! Smell marks are relatively uncommon but recently, Crayola and Play-Doh have successfully registered their well-known scents. Read the full analysis by our Intellectual Property team.


Crayola LLC, the manufacturing and retail company specialising in art supplies, has successfully registered its scent as a US trade mark. The achievement follows a six year long legal battle in the US. Registering scents and smells as trade marks has historically been challenging in various territories. Brand owners should note that it is possible to register their products and in-store scents as trade marks. We consider the recent approach of the trade mark offices in the EU, the UK and the US to smell marks.

EU approach

In the EU, scent marks have not been popular historically. The EU Trade Mark Regulation No. 2017/1001 defines a trade mark as a sign that can include:

  • Personal names
  • Designs
  • Letters
  • Numerals
  • Colours
  • The shape of goods or their packaging, or
  • Sounds

These signs must meet two criteria:

  1. They must be capable of distinguishing goods or services of one undertaking from those of other undertakings, and
  2. They must be representable on the register in a way that enables the competent authorities and the public to clearly and precisely identify the subject matter of the protection.

The requirement for clear representation under the second criterion has made it challenging for brand owners to register their scents and smells.

An EU application for THE SMELL OF FRESH CUT GRASS protecting tennis balls in Class 28 was ultimately permitted to proceed to registration in 2000, but the registration has since expired. However, the Court of Justice of the EU decision in the subsequent case of Ralf Sieckmann v Deutsches Patent-und Markenamt in 2002 reached a different decision. The CJEU held for the representation of the scent to be adequate, the following seven criteria must be met by the particular scent: clear, precise, self-contained, easily accessible, intelligible, durable and objective. In that case, it was held that the chemical formula, the description of the scent, and the sample of it, or the combination of all of those things, did not provide an adequate representation.

UK approach

Perhaps unsurprisingly, a similar approach has been adopted in the UK. However, trade mark applicants have arguably had more limited success before the UKIPO. By way of example, in 1996, Goodyear Dunlop Tyres UK Limited successfully registered “a floral fragrance/smell reminiscent of roses as applied to tyres” protecting “tyres for vehicle wheels” in Class 12. In a similar manner and in the same year, Unicorn Products Limited successfully registered “the strong smell of bitter beer applied to flights for darts” protecting “flights for darts” in Class 28 in the UK. That being said, these examples are the exception rather than the norm. Like the EU position, smell marks are not regularly prosecuted in the UK.

US approach

In the US, the recent success of companies such as Crayola and Play-Doh suggest that the tide might now be slowly turning when it comes to smell mark applications before the USPTO. Crayola filed an application to protect the scent of its crayons initially in 2018. It claimed that it had used the scent since as early as 1905. To support the application, it also sent the USPTO Examiner samples of its crayons and samples of its competitors’ crayons. The Examiner issued an initial objection on various grounds including a perceived failure to function as a trade mark. Crayola responded and submitted additional evidence. It also explained to the USPTO Examiner that its scent is the result of a special step in its manufacturing process. Ultimately, and after correspondence over a prolonged period issued, the application was permitted to proceed to registration on 2 July 2024. Crayola therefore now has a trade mark registration for the scent of its colouring crayons which is described as “a scent reminiscent of a slightly earthy soap with pungent, leather-like clay undertones.” Prior to that, Play-Doh obtained trade mark protection in the US in 2018 for the scent of its clay-like, colourful toy product. That application was filed in February 2017 and was registered in May 2018. The description of the play-doh registration is “a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.”

Comment

Crayola and Play-Doh can now enforce their trade mark registrations against third parties who are using their crayon and play-doh scents without their permission in the US. This trend may serve as an incentive to other brand owners to also seek protection of their unique product scents and smells. In industries like children’s toys, scents can be powerful brand identifiers, as they create emotional connections and evoke instant memories. Obtaining scent mark registrations therefore enables companies to differentiate their brands and products from competitors. Brand owners considering filing a scent trade mark application should be aware of the following:

  • The process of obtaining a registration might be challenging and there are no guarantees. However, in some cases, the merits of obtaining a registration will outweigh the costs of filing an application.
  • The scent must be distinctive and different from competitors’ products or services.
  • Evidence of consumer association/recognition of the scent as being associated with the company and its products will be helpful.
  • Evidence that the scent is non-functional to the products/services will also be necessary.
  • Evidence that the scent has acquired distinctiveness with the relevant public because of its use over a prolonged period will also be helpful to securing a registration.

People also ask

Does a US trade mark only cover the territory of the US?

Yes, trade marks are territorial rights. A national trade mark registration in the US will only cover the territory of the US, and in a similar manner a national registration in the UK will only cover the UK, and a registration in the EU will only cover the EU etc.

Is it more expensive to file a smell mark application?

No, not necessarily. As with any other trade mark application, the fees arising will depend on the number of classes of goods and services to be covered by the mark.

Can smell mark applications be opposed in the same way as other trade marks?

Yes, the application process for smell marks will be the same as for any other trade mark application.

For more information and expert legal advice on how best to protect your intellectual property rights, please contact a member of our award-winning Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.



Share this: