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A recent article in The Wall Street Journal addresses the fascinating topic of scent marks. While the marketing world is increasingly exploring the possibilities of advertising through appeals to our senses other than sight, among them touch and smell, the question arises as to whether scent marks can be protected legally – and hence carry value for their holders.

While in the US some scent marks have received the USPTO examiner’s approval, and descriptions such as ‘the mark consists of the scent of’ bubble gum, oranges, piña colada, vanilla, and so on can be read in the Register, this is not the case in the EU or in Switzerland. Indeed, for a mark to be registered in those jurisdictions, it must first be capable of being represented graphically. Failing that, a mark can simply not be registered in a paper or electronic Register.

Capturing the scent There is a reason for this. Indeed, the problem with scent marks may be more technical than legal, as the case of the Eddy Finn Ukulele Company’s piña colada-scented ukuleles shows. This company, which sells ukuleles smelling of piña coladas, discovered that ukuleles they had shipped to overseas markets had lost their scent during the trip.

The volatility of scents is not the only issue, however. As any perfume-wearer would know, scents also evolve with time and moreover are perceived differently from one person to another. And these problems also have implications for the registration process. What should be filed? Bottled samples, whose content will change over time, and which two different examiners will perceive in different ways? Chemical formulas?Descriptions? The answer has yet to be found. Moreover, if we keep in mind that the function of a mark is to distinguish brands from each other, this might prove to be quite the challenge when dealing with two marks ‘consisting of the scent of oranges’, for example.

That said, scents remain a wonderful marketing tool worth exploring. When we recall that smell is the sense that conveys the strongest emotional value of all and that emotions play a crucial role in consumer behaviour, the massive potential of scents in the market becomes clear. We all have our madeleine of Proust, and smell can bring to the surface feelings and sensations that were deeply buried within us and thought lost forever.

Similarly, studies have shown that the smell of vanilla has a calming effect on cattle, and this has led to the wide use of this scent in the feed industry. A pleasant scent could have the power to blur the sensation of time for consumers and modify their visual or taste perceptions in ways that may encourage them to purchase more. This power is already being harnessed in boutiques and malls around the world: Abercrombie & Fitch, with its signature scent ‘Fierce’, and Verizon Wireless, with the ‘flowery musk’ that perfumes its stores, are two major players that use scent marketing with flair.

Anca Draganescu is IP counsel at Novagraaf in Switzerland

Rihanna’s attempt to trademark her name ‘Robyn’ at the US Patent and Trademark Office (USPTO) has been opposed this week by DC Comics citing likelihood of confusion with Batman’s famous sidekick ‘Robin’. Novagraaf’s Helene Whelbourn examines the trademark implications of using your own name as your business name.

Rihanna certainly isn’t the first to seek to register her name as a trademark for use in business, but the opposition highlights one of the major shortfalls of such a strategy, even for those that are otherwise well known: someone may have got there first! Equally, not everyone’s name will be considered ‘distinctive’ enough to satisfy trademark registration requirements. Names are treated no different to any other trademark.

What should you do, therefore, if you have chosen to name your business after yourself? There are many examples of ‘famous’ names that have fallen foul of trademark law.

The Elvis Presley trademark has been the subject of multiple court cases over who owns or has the right to use the name. In the UK, it was held that the name had been used for so many merchandising products by so many companies that it lacked the ability to distinguish the goods of one company from those of another company.

The fashion (e.g. Louis Vuitton), leisure (e.g. Hilton hotels), and food and drink (e.g. Kellogg’s) sectors provide many examples of successful brands that have been built on the founder’s name. However, there are plenty of cautionary tales, too, from family in-fighting, such as with Gucci and Asprey, to loss of name after business sale, as both Elizabeth Emmanuel and Karen Millen found to their frustration.

Much will also depend on the relative distinctiveness of a name or surname for use in identifying a particular owner’s products or services; in other words, the more unusual your name, the more likely it may be deemed to be distinctive. (John Smith’s Brewery providing here the exception that proves the rule, but then the brand name dates back to the 1800s.) Similarly, the more common the name, the more likely it is that someone else will have got there first.

Even if the name is available, it is not guaranteed that the UK IPO or WIPO will accept the trademark application. Here, you may be able to improve your odds by combining your name with a distinctive logo, for example.

Top tips

• You should always search to check your name is available for use and registration before you start a business under the name.
• If you want to be famous, register your name (if possible) before you become famous to stop others jumping on the merchandising bandwagon.
• Even if you don’t want to be famous, if your name is your business name and if the name is capable of being registered, you should do so. It’s an asset of the business and a registration could increase the value of the company to a potential buyer.
• If you sell your business, make sure your name registration is not sold with it – if the name is the essential value of the business, you can always licence it to the new owner.

Refusals after the fact If you have been refused registration of your name as a trademark, either for the reason that it was not considered distinctive or because it was already taken, you are not prevented from using your name for ordinary business purposes. However, it is advisable to consult with a trademark attorney to ensure that your use of the mark is not infringing the existing registered right.

Your attorney will also be able to advise you on the steps that you can take to obtain protection for your business name, including any adjustments you may need to make in order to register it as a trademark.

As Rihanna has found in her application to register ‘Robyn’ for use in merchandising, oppositions can come from the most surprising of sources.

Helene Whelbourn is a trademark attorney at Novagraaf in the UK

Classification

• There are more than 16,600 different classification codes
• Classification of a product is based on what it is used for and what materials it is predominantly made from.
• Whether or not you have an agent who handles customs entries on your behalf, as the importer you have a legal responsibility to ensure the correct classification is applied.
• Incorrect classification can lead to; delays in clearing goods, over or underpayment of duty and even to penalties from HMRC.
• The Classification is made up of up to 10 numbers and is based on the WTO World Trade Organisations harmonised system.
• An 8 digit code is acceptable on exports
• All 10 digits are required on imports

For more information on Import duty please also read the following:

https://norfolkchamber.co.uk/knowledge/article/facts-about-import-duty

A third of leisure travellers say they would not return to a hotel that offered inadequate wireless access, and this number rises to two-thirds of business guests.” – Hotel Industry Magazine

These are pretty scary numbers for hotel owners. In other words, you can provide great food, a shower that wakes you up in the morning, crisp white bed linen, but if the average business traveller can’t get their emails, then they simply won’t return. There’s an image that often floats around on LinkedIn which uses Maslow’s Hierarchy of Needs to identify the importance of good Wi-Fi in our lives – it jokingly shows Wi-Fi as more important than food, warmth and a roof over our heads. I’ve been on holiday with two tweenagers and the first thing they ask for when we hit our accommodation is “what’s the Wi-Fi code?”. The desire for us to be in constant communication is driving an insatiable appetite for a good quality network connection.

So, why are certain hotel owners, public venues, coffee shops still getting it so wrong in Norfolk? Here are my top three theories :

Venues don’t use the bandwidth they have to ensure each visitor has a consistent experience. Here in Norfolk, we all know about limitations on broadband and general connectivity, but you have to work with what you have. For instance, if a hotel only has a 10Mb/s broadband line coming in, why allow one guest on a Breaking Bad Netflix all-nighter take up the whole lot? If you had visibility of your Wi-Fi network, then you’ll have the ability to provide users with individual bandwidth limits or restrict things like Netflix altogether. That way, everyone can get their emails, login to Facebook, keep up to date on WhatsApp and Instagram – all minimal bandwidth stuff to maintain happy visitors.

Getting logged in is really tiresome. I’ve given up even trying to log into certain Wi-Fi locations simply due to a dreadful login process. Why would the provider want to collect all sorts of information? We’re happy to give up our email address so that you can let us know about great offers, but home address and mobile numbers are just a step too far in return for a bit of bandwidth. Make it as simple as you can for your guests and they’ll return for more. Providing a simple splash page welcoming your guest or even telling them about your special offers on dinner for the evening would provide a pleasant experience. Even better, might be to use social media logins, such as Facebook. That way, your guest will be telling everyone that they’re enjoying coffee or staying at your venue.

Weak Wi-Fi signal. A lot of venues and hotels jumped on the Wi-Fi bandwagon 10 years ago and invested heavily in “future tech”. The problem is, the IT world has seen enormous change in that period. I typically carry three devices around with me, each with a different purpose, but all with the capability to connect. We also have a massive array of devices with huge amounts of power and intelligence that are now incompatible with older Wi-Fi platforms. To add to the complexity, 10 users with 3 devices each means 30 connections and older access points just can’t cope with the density.

The good news is that Wi-Fi technology has come a long way to cope with this changing connected world. There are multiple vendors out there offering technologies that can solve the issues mentioned above and provide you with valuable data analytics to grow your business. For hotel owners, it sounds as though it’s as important as getting the dinner menu right, providing a clean bathroom or ensuring you have the right staff to say hello in reception.

The production and trade of counterfeit goods in China is the thorn in the side of most well-known brands, but it’s not only the global giants that are affected. From rip-offs of fashion and beauty products to fake spirits and medicine, nearly every business could be impacted; particularly, those that manufacture their goods in the country. Is there anything that they can do?

It’s said that if a business wishes to see if its products are being counterfeited, it just needs to run a search on Alibaba. The Chinese auction site dwarfs equivalents such as eBay in terms both of its product range and revenue, and also acts as a major channel for the sale of fake goods, much to the frustration of brand owners.

Kering, the company behind luxury brands Gucci and Yves Saint Laurent, is currently suing the Chinese ecommerce group for encouraging and profiting from the sale of counterfeit goods on its platform. Like many brand owners, Kering is angry at what it considers to be Alibaba’s slow response to counterfeit allegations and what it perceives as ‘complicity’ in the sale of those items.

“My experience of Alibaba is that it has been slow to react in the past and well behind other sites, such as eBay,” agrees Tom Farrand, Managing Director, Trademarks, at Novagraaf in the UK. “This can be partly explained by the sheer volume of Chinese-originating counterfeit goods, and also the market for them. One of the problems shared by Alibaba and brand owners is that, at present, many customers are on the site not looking for real products.”

Farrand expects the case to lead to some improvements at the platform, but says that “there is still much to do and a long way to go”.

Taking action If you do find your products after running a search on Alibaba, what should you do? The platform’s complaint process is still the best place to start before starting a more expensive legal action. “The company’s rate of response to counterfeit action is starting to getting quicker, the complaint process has been improved and follow-up is better,” says Farrand. Online monitoring will help you to build up evidence of counterfeit activity that should make it possible to ensure the website removes the goods or seller.

Of course, brand owners are advised to tackle the source of the counterfeit goods, not just the channels in which they are sold. Where a problematic seller is identified on Alibaba, for example, additional investigation will help you to find out more about the product’s manufacturers and distribution channels in order to stamp them out at source.

Here, levels of IP coverage, as well as techniques to prevent and identify activity, will be important. This includes, for example:

• registering key brand and product names as trademarks, and innovative design features as design rights, so that you can seek legal redress for any unauthorised use of those trademark or design rights (e.g. for the manufacture, distribution and sale of trademarked goods);
• raising awareness of the issues within your business by educating your staff, business partners and customers;
• actively monitoring the online and offline market, recording, reporting and carefully analysing the findings;
• working closely with law enforcement authorities such as the Border Force (Customs) and local Trading Standards offices that have a statutory duty to enforce the criminal provisions of Trademarks Act; and
• taking enforcement action where appropriate.

If the manufacture of the fake goods is taking place in China, you will need to liaise with local agents or investigators and involve local police and authorities in order to target the manufacturer at source. This is not a simple task. Novagraaf provides anti-counterfeiting services to a number of brand names in the country, from online trademark monitoring to investigation, trap purchases, trademark training, trademark recordals and legal representation in customs seizure proceedings.

For more advice on developing an anti-counterfeiting strategy, read our frequently asked questions.