Non-traditional trade marks – a lack of common scents?

Trade marks can be registered for various ‘signs’ including shapes, sounds, words, colours, and even scents.¹ Although rare, scents can be registered as trade marks if the specific requirements are met.

This is the case for Crayola’s recent registration of a trade mark for the distinctive scent of its crayons in the United States. Described as “slightly earthy soap with pungent, leather-like clay undertones”, the trade mark was successfully registered in July 2024 after being initially denied in 2018. The childhood scent of Crayola crayons becoming a registered trade mark follows other brands in the US which have also registered scents including, notably, Hasbro’s Play-Doh which has registered a trade mark for the scent of the dough. Other registered US scent trade marks include the “flowery musk scent” used in Verizon stores, the bubble gum scent used for shoes by retailer Grendene, and the chocolate scent for stores of the jewellery company Le Vian.

In Australia, it is also possible to register a trade mark for a scent. However, there are currently only two registered scent trade marks in Australia. One for the eucalyptus scent of E-Concierge Pty Ltd’s scented golf tees, and another for the cinnamon scent applied to the non-wood-based furniture of NorvaNivel Pty Ltd. The minimal number of registered scent trade marks in Australia is likely, in part, due to the high threshold of the distinctive description requirements.

Representing a scent trade mark in Australia

In order to be accepted, a trade mark must be able to be represented graphically.² A representation of a trade mark must be of a description with enough quality that 1) it ensures the features of the trade mark will be preserved in the course of time and 2) is suitable for reproduction.³ Thus, it can be difficult for scent marks to comply with these requirements.

There was an attempt, in the case of Edan SARL v Office for Harmonisation in the Internal Market,⁴ to register a trade mark for the scent of ripe strawberries. The application was denied due to the lack of distinctiveness and inability to be represented graphically. The description “smell of ripe strawberries” could refer to several varieties and therefore to several distinct smells, which meant the graphical representation was neither unequivocal nor precise and did not eliminate all elements of subjectivity.

What is required for a scent to be registrable in Australia?

A scent trade mark needs to have the capacity to be distinguished from competitors.⁵ The capability of a scent to distinguish a brand’s goods or services is assessed on the same general criteria as other types of trade marks – whether other traders would want or need to use the attempted mark in the ordinary course of their business, without improper motive.

There are three categories of scents which cannot be distinguished and thus would not be successful in an application for a trade mark:

• The natural scent of a product. There is no inherent adaptation to distinguish from the good’s natural scent – eg perfume for personal use, essential oils for perfumery or the scent of cedar for timber products.
• Scents used to mask unpleasant natural odours in goods. The scent is applied for a functional purpose and therefore cannot be registered as a trade mark – eg lemon scent for domestic bleaches.
• Scents which are common to a trade. These are scents which while non-functional, are so common that consumers would be unlikely to associate the fragrances with the origin of the good – eg lemon scent for dish washing detergents or herbal scents for shampoos and soaps.

To be capable of distinguishing the applicant’s goods, the scent needs to be something apart from the goods themselves. It should neither be a natural characteristic nor an expected characteristic of the product but instead something added to identify the applicant’s goods from others in the market. By way of example, an Australian scent trade mark which was accepted but never registered was flights for darts that smelled of beer.

Could Crayola register a scent trade mark in Australia?

Although the trade mark requirements in the US are slightly different to Australia, the US Patent and Trademark Office also requires scent trade marks to be a non-functional aspect of the product and be distinctive enough to differentiate a brand from its competitors. Thus, while it took some perseverance from Crayola to prove that its crayons met these elements, it could be possible for Crayola to register the scent of its crayons in Australia, preventing competitors from using similar scents in connection with its products.

In order for Crayola to register a scent trade mark in Australia, Crayola would need to submit a high-quality graphical description of its crayons with enough detail to allow reproduction and ensure the trade mark will be preserved over the course of time. Crayola would need to prove that the distinctive scent of its crayons is a non-natural, non-functional and uncommon scent aspect that has been added to its product to differentiate Crayola crayons from other crayons on the market. If these elements are met, Crayola would need to apply with the minimum filing requirements to register a trade mark.⁶ Crayola may need to consider gathering evidence of use of the scent aspect of its crayons for the purpose of rebutting any objections that its scent trade mark is not sufficiently distinctive, particularly evidence of a considerable number of years of experience using the crayon scent trade mark.

Businesses should consider whether a scent trade mark could assist in differentiating its products in the market or if a product already holds a distinctive non-functional scent that could be protected from competitors with a registered scent trade mark. HWL Ebsworth’s Intellectual Property team has extensive experience in advising businesses on the registration and application of trade marks. If you have any concerns or are seeking advice on how your business could register a scent trade mark, please do not hesitate to contact us for further information.

This article was written by Luke Dale, Partner, and Bellarose Watts, Law Clerk.

¹Trade Marks Act 1995 (Cth) s6 (definitions).
²Trade Marks Act 1995 (Cth) s40.
³Trade Marks Regulations 1995 (Cth) reg 4.3(10).
⁴(2005) 68 IPR 669.
⁵Trade Marks Act 1995 (Cth) s41.
⁶Trade Mark Regulations 1995 (Cth) reg 4.2.