NON-TRADITIONAL BRANDS IN MEXICO: OLFACTORY BRANDS

As of the May 2018 amendment to the Federal Industrial Property Law (currently the Federal Law for the Protection of Industrial Property), the registration of trademarks that can be perceptible by the sensesThis basically opens the opportunity for the registration and protection of odors to distinguish a product or service, known as scent marks.

The application for an olfactory mark must comply with practically the same requirements applicable to any other distinctive sign intended to be registered as a trademark (compound name, design, three-dimensional shape, etc.).

Now, one of the essential requirements for the granting of the registration, which generates much confusion, is that the aroma or odor to be registered cannot be a distinctive sign of the product or service for which protection is sought. For example, the scent of a perfume cannot be registered as an olfactory trademark, since the purpose of said product (perfume) is precisely to have a characteristic and identifiable aroma in the market.

Therefore, in addition to complying with the formal requirements of the Law, the most important thing is that the aroma of an olfactory mark should is not part of nature of the product or service, otherwise, the request will be inadmissible at origin.

In this sense, for the registration of an olfactory mark, there are the following impediments in terms of substance:

1. It is not possible to protect the aroma of a product that, because of its nature and characteristicsmust have it; or, the scent is part of your functionality. Example: the aroma of a scented candle; the smell of a particular beverage, food or dish; the smell of soaps, detergents, cleaners and essential oils; aromatic creams and cosmetics; etcetera. The above is also applicable to establishments that, because of the service provided, the place always has a particular smell. Example: the smell of coffee in a cafeteria.
2. No generic odors. Example: smell of vanilla, lavender, coffee, etc.
3. Odors and aromas that lack distinctiveness.
4. Finally, odors and aromas that generate confusion with other olfactory marks already registered.

Finally, one of the first olfactory trademarks registered in Mexico are the Bamboo-scented paints of the company Sureste Sustentable S.A. de C.V. and the plasticine (known as play - doh) of the Hasbro, Inc. brand. Thus, in these cases, the registered smell has nothing to do with the product that characterizes it.