Can odors be registered?
What novelties are there on trademarks? The brand-new Bill No.12,135-03.
Odors are part of the experience offered by a brand, and studies have found that an odor, accompanied by the perfect word, can be decisive for a purchase decision.
Soaps, candles, perfume and detergents, to begin with, but also others such as the fruity odor of the Brazilian Melissa jelly shoes, the sweet vanilla of the Play Doh modelling compound, the famous coffee-scented spray used by Starbucks. But, can we register these experiences?
6 months after its upcoming enactment, the Bill amending Law 19,039 on Industrial Property shall become effective in Chile.
This law brings several changes on trademark matters, which we will analyze below, the first of which is the inclusion as registrable marks of the signs known as “non-traditional marks”, such as combinations of colors, sounds, flavors, textures, movement and even odors. Interesting.
So, can odors be registered in Chile?
This is no easy task. And not only due to its gaseous and volatile nature, but also due to the difficulty in identifying it, as every registered trademark must be unique and capable of distinguishing products or services in the market. The international experience will provide conclusions relevant to the local analysis.
The United States Patent and Trademark Office has made an effort to register odors and, in 2018, the aroma of the Play-Doh dough become the 13th odor to be registered, along with other very specific cases, such as a strawberry scented toothbrush, and a brand of piña-colada scented ukuleles. In the United States, aromas are utilitarian. Just like perfumes or air fresheners, they play a certain role, and cannot be registered as trademarks. According to the guidelines “the amount of evidence required to assert that an odor or fragrance acts as a trademark is key.”
We must be attentive to the jurisprudential developments of the Chilean National Industrial Property Institute in this regard, but, regardless of the resolutions and the path that such resolutions take in Chile, we cannot forget that everything that is part of the unique experience of a mark, and the result of the creativeness and of the particular vision of the persons behind it, must be protected and recognized.
We are thus left with the following question: Must an aroma be capable of being related to a mark due to its previous use in the market for it to be registered, or is the novelty and distinctive capacity thereof sufficient? What do you think?
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