Letters & comments. Calendar of meetings

• Pages: 28-29

“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

From Juan Martin Aulmann

and Daniel R. Zuccherino,

Obligado & Cia,

Buenos Aires, Argentina

APRIL 2010

28

alike – but also in courtrooms. Whether such pro-

ceedings 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

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First registry of a scent trademark in Argentina

The New Kids… “block” a Community mark

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 reg-

istered 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 exclu-

sive rights to the particular scent through trade-

mark protection. Argentina’s trademark law allows

for a wide interpretation to be applied in register-

ing 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 ap-

plications had been for products, rather than con-

tainers, 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 in-

corporated 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 le-

gal action to have the opposition withdrawn. The

court’s decision in the case emphasized that, in or-

der 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 dis-

tinctiveness and registered them.

The L’Oréal trademarks are still the only scent

marks in Argentina’s trademark registry.

From Franck Soutoul and

Jean-Philippe Bresson,

INLEX IP Expertise,

Paris, France,

www.inlex.com,

www.iptalk.eu