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First registry of a scent trademark in Argentina

Following publication of the article “Smell, Sound and Taste – Getting a Sense of Non-Traditional Marks” (Issue 1/2009), it may interest WIPO Magazine readers to learn that Argentina has registered its first scent trademarks.

Argentine trademark law does not expressly refer to the registration of so-called scent trademarks – fragrances, smells or scents. However, marketers of certain products provided the containers thereof with a distinctive scent and tried to obtain exclusive rights to the particular scent through trademark protection. Argentina’s trademark law allows for a wide interpretation to be applied in registering distinctive signs, and many juridical authors support the registration of scented signs.

The marketers were finally successful in their quest. In January 2009, INPI – the Argentine trademark authority – granted its first scented trademarks (numbers 2.270.653/54/55/56 to 2.270.657) to L’Oréal (under Nice Classification 3). Each one comprises a “… Fragrance of… (different fruits in each case)… applied to the Containers …”

It is fundamental to note that if the trademark applications had been for products, rather than containers, INPI's decision would surely have been different. The fragrances of a product itself would, in many cases, be considered a resource in the public domain – if, for example, the product incorporated scents such as strawberry, raspberry, peach, mint, etc.

L'Oréal’s applications for scent trademarks dated back many years, but had been opposed by a third party when published by INPI. L’Oréal brought legal action to have the opposition withdrawn. The court’s decision in the case emphasized that, in order to determine the registration of a sign, there is no “substantial requirement” in the Argentine trademark legislation that such signs be “visually perceptible” or “graphically represented.” After the court notified INPI that the opposition had been withdrawn, INPI evaluated the trademarks for distinctiveness and registered them.

The L’Oréal trademarks are still the only scent marks in Argentina’s trademark registry.

From Juan Martin Aulmann and Daniel R. Zuccherino, Obligado & Cia, Buenos Aires, Argentina

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The New Kids … “block” a Community mark

“What you don’t know about trademarks” (issue 6/2009) discussed how to keep your trademark healthy. One easy way is by not letting it lapse, then, worse, be registered by a third party who can free-ride on the trademark’s good reputation, as a number of popular music groups have learned. It would have been much easier for the “New Kids On The Block,” mentioned in the case below, to maintain their trademark than to file for invalidation.

The names of rock and pop bands are hot topics of conversation in schoolrooms and chat rooms alike – but also in courtrooms. Whether such proceedings are opportunistic or publicity-seeking, a band name remains a unifying instrument able to generate sales, fan mail and cult followings long after a group has disbanded. Ozzy Osbourne’s battle over “Black Sabbath” caught headlines in mid-2009; in December, that distinction fell to the “New Kids On The Block.”

In 2005, SM Productions Partnership filed a Community trademark for “New Kids On The Block” for video recordings, compact discs, live entertainment services, the organization of a fan club and the publication of printed matter. The S and M were Richard Scott and Denny Marte.

As to the history behind the scenes, Maurice Starr set up the American boy band “New Kids On The Block” in Boston in 1984. Management of the group’s affairs – concerts, spin-off products and protection of the group name and logo by trademarks – was entrusted to Big Step Production, 60 percent owned by Maurice Starr and the rest by Richard Scott. The same Richard Scott as in SM Productions. When the group broke up in 1992, Richard Scott continued to receive royalties on recordings and spin-off products, and Big Step Production transferred all rights in the group’s name and logo to its five members.

Back to the present. In 2008, three years after SM Productions filed the Community mark, the original members of the boy band – Daniel Wood, Donald Wahlberg, Jonathan Knight, Jordan Knight and Joseph McIntyre – filed an administrative application for the trademark to be invalidated. The grounds put forward were, inter alia, the bad faith linked to the filing. The involvement of Richard Scott in the record industry; his participation in the companies Big Step Production and SM Productions Partnership; and the expiry of the boy band’s trademarks – in spite of its public recognition and phenomenal economic potential – led OHIM to invalidate the Community mark in December 2009.

The mark could not be transferred to the five former band members as the procedure was one of administrative application for invalidation based on bad faith. Only a court case at the national level would have made it possible to envisage a transfer of the rights based on bad faith.

From Franck Soutoul and Jean-Philippe Bresson, INLEX IP Expertise, Paris, France www.iptalk.eu

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