RioBrand's Industry Diary

• Picking up the scent of brand protection
• Who's examining your application?
• And the value of your good name

The sweet smell of rejection

A decision by the UK Trade Marks Registry, refusing to register the smell of cinnamon as a trade mark for furniture, has been upheld on appeal. The application was filed by John Lewis of Hungerford plc as soon as the current UK Trade Marks Act - with its broader definition of what types of mark may be registered - came into force in October 1994. The application was finally refused protection in December 2000 following a hearing before Geoffrey Hobbs QC.

Smells are perhaps the most controversial of the unorthodox trade marks being recognised under the laws of an increasing number of countries. The case contrasts with last year's decision by a Board of Appeal at the Office for the Harmonisation of the Internal Market (OHIM) which over-ruled the original refusal to register the smell of new-mown grass as a European Community Trade Mark (CTM) for tennis balls.

Meanwhile the European Court of Justice (ECJ) is preparing to issue an important ruling in a case involving a smell trade mark which has been referred to it by the German courts: Dr Ralf Sieckmann vs Deutsches Patent- und Markenamt. The ECJ will be addressing fundamental questions such as whether the definition of a registrable mark laid down in the Directive harmonising the trade mark laws of member states extends to non-visual signs (such as smells and sounds), and if so what is a suitable method of representing them.

The ECJ ruling is expected to provide national courts and trade mark registries, as well as brand owners, with vital clarification of the degree to which smells will be protectable within the EU and help to reduce the controversy surrounding this topic. Further applications in the pipeline, whose fates hang on the ECJ decision, include a CTM application to register the smell of vanilla for a wide range of goods ranging from clothing, jewellery and stationery through to skin patches, perfumes and confectionery.

Whatever the courts' decisions about registrability, some brand owners are certain to persist in pursuing their fascination with fragrances and will continue to see them as valuable distinguishing components of the brand offer. For example, according to a report in the Daily Telegraph, British Airways is currently developing and testing a special aroma to 'enhance the environment and try to counteract the inherent aircraft smell' of the toilets in its first class cabins. According to Georgie Bridge, the airline's design management executive, 'the aim is that eventually our aroma could become as strong an element in brand recognition as other elements of our corporate identity'.

UAE Patent Office outsources patent examination

During the last decade most big businesses have outsourced an increasing range of services, with responsibility for everything from payroll to catering passing from in-house departments to external specialists. Now patent offices are following suit and making increased use of the practice, even for key functions.

Training of colleagues from overseas patent offices has long been undertaken by some registries but according to a report in the Saba Bulletin, the United Arab Emirates Patent Office has recently appointed the Austrian Patent Office to undertake substantive examination of UAE patent applications. Applications filed in the UAE will be mailed to Austria where searches for relevant prior patents and novelty examinations will be conducted.

Could we see outsourcing of examination spreading in the future, with other countries following suit and perhaps even applying the procedure to their trade mark and design applications as well?

Name your price

What is generally considered to be the most valuable domain name in the world, sex.com, is reported to be on the market, with an asking price of $85 million. On many internet search engines the word "sex" is the most searched word, a level of popularity that explains why the name is so highly prized. The name's present owner - who has described it as "a licence to print money" - had to go to court to retrieve the name from someone who had forged a signature on a Network Solutions transfer document.

Meanwhile, in a decision relating to the domain name 'financialreview.com', WIPO's Arbitration and Mediation Center has issued a ruling that confirms it is a legitimate business activity to register domain names consisting of generic terms and to then offer them for sale -a decision which appears to sanction the speculative registration of domain names, provided no third party trade marks are involved. The WIPO panel held that the complainant had failed to convince them that the registrant had protected the name with the specific intention of selling it to them or one of their competitors. The panel went on to reject allegations of bad faith and expressed the view that until the complaint was filed the American registrant was unlikely to have been aware of the trade mark rights owned by the Australian complainant.

...and finally

We notice that the Eurostar logo has been registered in Brazil and in Thailand. And you thought Eurotunnel had stopped digging when they reached Calais...

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