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24 June 2009
The "Smell of fresh cut grass" in relation to tennis balls was a
rare registration of a smell mark theoretically paving the way for the
protection of smell as CTM (Community Trade Mark).
The Second Board of Appeal began by setting out the purpose of
the graphic representation requirement in art. 4 CTMR (Community Trade
Mark Regulations), referring to its decisions in 3D Mark and Orange. In these
matters it had held that graphic representation was an imperative necessity for
conducting an examination and registration procedure.
The question then was whether or not the description of the
smell of fresh cut grass gave clear enough information to those reading it
to walk away with an immediate unambiguous idea of what the mark was when used
in connection with tennis balls.
The Second Board of Appeal through artistic lawyering took the
view that the "smell of fresh cut grass" did indeed satisfy those requirements
and overturned the examiner's decision by stating that:
...the smell of freshly cut grass is a distinct smell that
everyone immediately recognises from experience...
A smell mark was first granted in the US by the Trademark Trial
and Appeal Board (TTAB) in 1990. This was for the registration of a fragrance in
respect of embroidery yarn. described graphically in the application as "a high
impact, fresh floral fragrance reminiscent of plumeria blossoms", basically
Smell marks are easy to keep track of numberwise but in this
case TTAB seems to have relied heavily on the fact that the applicant was the
only existing producer of scented yarn in the country and that customers,
dealers and distributors of her scented yarns and threads recognised the
applicant as the source of the goods.
In summary you'd be mad to try.
Tim Mount is a trainee solicitor, and can be contacted at
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Lawdit Solicitors offer services and
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Article Published/Sorted/Amended on Scopulus 2009-07-05 18:07:34 in Legal Articles