Intellectual Property Lawyers l Digital Media Solicitors
Specialist Intellectual Property and Digital Media Legal Advice

Blog For Empowering Creatives: IP and Digital Media Lawyers Insights

PAIL Solicitors IP and Digital Media Blog

Our Blog

.

When I think of Frank Sinatra's "My Way," I see a connection to the main ideas behind intellectual property law. "My Way" embodies personal expression and an individual's journey through life, which parallels the concept of the ideas-expressions dichotomy in copyright law. It echoes the principle that music, literature, or art can be copyrighted while allowing others to explore the same ideas without infringing upon that particular expression. Sinatra's anthem also celebrates uniqueness, which is reflected in the definitions of all of the varying types of intellectual property.

The Purpose of This Blog

The articles on this blog are all written, reviewed, and edited by me, Mr Peter Adediran, the Digital Media and Intellectual Property Solicitor at PAIL Solicitors. They are intended to empower the new generation of business executives, professionals, business owners and creatives who want to keep up with intellectual property, digital media and entertainment law in the digital age. Most importantly, empower the community of creatives who want to create works "their way". In today's rapidly evolving digital landscape, staying informed and increasing knowledge in specialised legal services is crucial for e-commerce and digital technology businesses. At PAIL® Solicitors, we understand the unique challenges start-ups, business owners, professionals, business executives, creatives, writers and talent face in protecting their intellectual property and navigating legal complexities. By reading this blog and engaging us as your legal representatives you can safeguard yours and your company's reputations, make informed financial decisions, and confidently expand into new markets by focusing on continuous learning and expertise in these areas.

This blog contains articles on the following themes:

  • Advice on Protecting Digital Content

Encouragement to Stay Informed and Protected

For creatives and businesses alike, staying informed about legal issues surrounding intellectual property is critical. Knowledge is a powerful tool for safeguarding one’s work from infringement or misuse. We encourage individuals to engage with our resources, participate in discussions, and keep abreast of developments in IP law. 

Trademark smells?

 

Trademark smells?

Can I trademark smells? Can a shape be trademarked? This is recurrent question we get asked as our clients are mostly in the creative industries.

A trademark sign must be capable of being represented graphically. This means that it must be in some kind of physical form. But contemporary culture has evolved so that purely physical representation alone cannot always capture the distinction between goods and services. Sounds, and colours have also been accepted as being capable of graphic representation even though sound, for example, lacks physical form. Even tastes and personal names can now be registered as trade marks. In other words, an application for a trademark sign can be supported with evidence to prove that the mark is clearly distinctive of the origin of a good or service therefore making it capable of graphic representation. So an application for a sound can be supported with a verbal description and a musical score.

So trademark smells? The answer is that shapes and smell are currently not capable of a trademark under UK and European law. Shapes are protected as designs.

Case: vennootschhap Onder Firma Senta/The smell of freshly cut grass, R156/1998-2 [1999] ETMR 429

In the above case the Office of Harmonisation of the Internal Market (OHIM), who administer European Community wide trademark law, stated that you could support an application for a trademark with verbal evidence to prove that a smell did clearly distinguish a good or service. In other words a smell was capable of being trademarked within the European Community.

Nevertheless, in the case of Ralf Sieckman [2002], Mr Sieckmann applied to register the smell of cinnamon as a trade mark in Germany. He provided a verbal description, sample, and a chemical formula. The ECJ indicated that these additional evidence were not enough to support an application to register a smell as being “sufficiently precise” to make it capable of being a graphic representation to satisfy European trade mark law for the registration of trade marks (the UK is subject to European trade mark law). The evidence provided was not capable of identifying the origin of underlying goods or services with enough particularity.

In other words, the European Court of Justice, indicated that a smell was not on the menu of marks that were capable of graphic representation. The central issue was “sufficiently precise”. Whatever additional evidence used to support an application for a smell had to be “sufficiently precise”. This obviously does not exclude completely the possibility of a smell being accepted as capable of graphic representation but it does not include it either because it sets a very high bar for an applicant trying to demonstrate graphic representation.

The ECJ essentially indicated that perhaps one day in the future as technology and culture evolves someone will find a way of making smells capable of graphic representation but until then, don’t hold your breath. For more information on UK trademark law refer to the Trade Mark Act 1994 – UK Trade Mark Law.

To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. Mr Peter Adediran is the owner and principal solicitor at PAIL® Solicitors.  Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.

Meet The Team: Peter Adediran; Maya El Husseini; Gabrielle Felix; Poppy Harston