The company was initially unsuccessful in obtaining the trademark: the trademark examiner rejected Hasbro’s first filing on May 26, 2017, on the grounds that scented dough lacked distinctiveness (most similar products are also scented). Hasbro�� the decision, and Play-Doh’s distinctive “sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough” is now a protected American trademark, preventing other moulding dough companies from using the scent on their own products.

There are involved with scent trademarking, including the subjective nature of smell, the temporality of scents themselves, the difficulty in making the existence of a scent trademark known to consumers, and the possibility of exhausting all available scents. However, the benefits of tying a specific scent to your product are numerous, as they allow you to leave a mark on consumers through . Hasbro themselves have mentioned the benefits of scent trademarking, as stated by Jonathan Berkowitz, senior vice president of Global Marketing for Play-Doh: “By officially trademarking the iconic scent, we are able to protect an invaluable point of connection between the brand and fans for years to come”.

As American law currently stands, in order to trademark a scent, a “substantial threshold” . This has historically been quite difficult for companies to achieve, as applicants must prove that their product’s scent is both nonfunctional and distinctive, in order to receive full trademark protection.

“Nonfunctional” in this context stipulates that the trademark cannot cover aspects “”. As a result, Verizon can trademark the smell of their marquees, but Chanel cannot do the same for their perfumes . The of the product, just as Play-Doh’s scent is arbitrary to its function as moulding dough. If a company can show that their product’s scent is nonfunctional, then it can be added to the supplemental trademark register, and gain limited legal protection (.)

In order to register a scent as a trademark (and not merely be protected under the common law principle of passing off), companies must show that their product’s scent is distinctive. This is no easy task and, before Play-Doh, only ��have reportedly satisfied the test. To prove that a product’s scent is distinctive per the USPTO “.” Passing this stage of the test is what made the Play-Doh decision newsworthy, and required Hasbro to present . In Hasbro’s : “Since the PLAY-DOH brand’s inception in 1956, the distinctive smell has consistently served as a hallmark of the brand, and after more than six decades providing children with a source of imaginative and creative play, the scent has become increasingly recognizable among children, parents and grandparents alike.”

Awarding a trademark to Play-Doh shows a departure from the original rationale behind scent trademarking. While the original scent trademark was given to OSEWEZ thread, in part because they were the only company manufacturing , it has been acknowledged by the trademark board itself that Play-Doh is far from the only toy putty company that scents its product. As Play-Doh’s original scent trademark rejection stated, “when purchasers are confronted by the scent of applicant’s goods, they are likely to perceive it as an incidental feature of the goods rather than perceiving it as a source indicator.” In now giving Play-Doh’s scent a trademark designation, they are saying that the specific scent can be a source indicator, not just an incidental feature of the product. This would suggest that the distinctiveness designation could be moving away from the standard of scenting a product in general, towards the standard of giving a specific scent to a product.

While scent trademarks are very much in their infancy, existent through only sparse case law, Hasbro’s actions and publicity will certainly bring these trademarks a large amount of attention, and allow for the development of some often vague laws. This may prove to be the catalyst that could bring a valuable marketing tool the protections it deserves.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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Abloh has been using quotation marks around everything he associates with the Off-White brand. Whether it is a design feature on a��, a name, or just different objects on his Instagram account, the quotation marks have become his new go-to, and his devoted fans are noticing the trend. As such, the question becomes: can Abloh’s use of quotation marks be protected through trademark law given its use for commercial purposes?

According to Section 2(d) of the��Trademark Act, 15 U.S.C. §1052(d), trademark law is based on��whether or not there is a “” between the proposed trade-mark and another mark already registered or in a prior pending trade-mark application owned by someone else. The ��(“determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.”

The��USPTO has a public database on which anyone can search marks that are either registered or pending registration. Unfortunately for Abloh, quotation marks have been used as a signifier in the past by other brands, based on a search of USPTO.

However, for Abloh, it seems the use of quotation marks is a way to make the Off-White brand more distinguished for the time being, as opposed to securing a long-term intellectual property right. This means that he may not even be concerned about legally protecting his mark and going through the USPTO.

In a recent , Abloh explained, “You can use typography and wording to completely change the perception of a thing without changing anything about it. If I take a men’s sweatshirt and write “‘woman’ on its back, that’s art.” In fact, his recent “FOR WALKING” boots for women, pictured below, have become increasingly popular and are usually out of stock, perhaps in part owing to his creative use of typography.

Though at first glance it may seem odd for a brand, or anyone for that matter, to seek to claim rights to the use of quotation marks, this may not be completely shocking. In fact, according to , Off-White’s general logo consists of diagonal stripes, pictured below, which are often seen on crosswalks and street signs. Nevertheless, the Off-White legal team for federal trademark registration, which is still pending.

It is not difficult to make sense of this. Trade-mark law the use of words, names, symbols, or any combination thereof, used for commercial gain as a means of brand identity. Furthermore, as noted above the only limitation on receiving this protection is whether there is a “likelihood of confusion.”

As such, originality is not a trademark requirement, so the fact that the use of quotation marks or diagonal stripes are ubiquitous is not fatal for Abloh’s brand. Furthermore, since Off-White is increasingly becoming popular, consumers are more likely to associate these designs with Abloh, and Off-White as a result. Therefore, the “likelihood of confusion” element mentioned above should not be a difficult hurdle for Abloh, either.

Finally, US trademark law on a first-to-use basis, as opposed to a first-to-file one. This means that a registration with the USPTO is not necessary—though it is beneficial—to gain common law protection of the design. The use of the mark for commercial gain, which is what Abloh has been doing for the past several months, is, indeed, what he should be doing.

Nevertheless, it will be interesting to see whether Abloh actually pursues legal protection.

Saba Samanian is an IPilogue Editor�� and a JD Candidate at Osgoode Hall Law School.

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IP Day was a phenomenal experience, especially as a student having the opportunity to meet leaders in the IP field and many of the judges before whom IP cases often come. I was especially excited to attend the Judges’ Dinner, which honoured Justice Roger T. Hughes. The CBA’s Intellectual Property section organised a fantastic event and I certainly hope to attend many more times in the future.

“Just Laugh It Off: Trademark Parody and the Expansion of User Rights” will appear in the upcoming issue of the . The introduction to the paper is excerpted below.

In Canada, the concept of fair dealing has been described as a “user’s right,”[1] as have the other exceptions in the Copyright Act [2]. In CCH Canadian Ltd v Law Society of Upper Canada, the Supreme Court of Canada explained that a non-restrictive interpretation of these rights is integral to maintaining a proper balance “between the rights of a copyright owner and users’ interests.”[3] Previously, the Court recognised that such a balance is a fundamental element of copyright law, stating in �ճ�é��������� v Galerie d'Art du Petit Champlain inc that there is a “balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.”[4] Indeed, this balance has been a feature of copyright cases decided after �ճ�é��������� and CCH.[5] Thus, the conceptualization of the intellectual property rights in copyright operate within the context of the competing interests of creators/owners of works and those third parties who wish to use the works.

The idea of balance between owners of intellectual property and the public’s interests in using that property is not restricted to copyright. The Supreme Court has said that the “patent system is based on a ‘bargain’ … the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge.”[6] Copyright and patent law offer a trade-off of sorts between the monopolies they grant and the public interest in using the fruits of those monopolies in some way. Of course, there is tension between creators/owners and users because of this balancing act. This struggle led the Federal Court of Appeal to cite the nineteenth-century British case Hanfstaengl v Newnes[7] with approval:

The protection of authors, whether of inventions, works of art, or of literary compositions, is the object to be attained by all patent and copyright laws … On the other hand, care must always be taken not to allow them to be made instruments of oppression and extortion.[8]

Intellectual property law, then, must take note of those who use what it protects and should not extend beyond its prescribed boundaries.

We therefore have a tense balance and a bargain in intellectual property law. Fair dealing is an example of both legislation and courts accounting for this fact. What is conspicuously absent from the law, however, is any express acknowledgement of user rights in trademark law. Trademarks are intellectual property, even if they are “something of an anomaly,”[9] and they are often dealt with by third parties. Trademarks depicted by non-owners might appear in a number of ways, such as in paintings of a university football team,[10] on union literature criticising an employer,[11] or even parodying a canned luncheon meat in a puppet film.[12] Yet, the law of trademarks does not explicitly recognise these dealings or uses as fair (or at least potentially fair) – there is no set of fair dealing provisions for research, parody, criticism, or news reporting[13] in the Trade-marks Act.[14] The absence of such provisions in the trademark realm is indicative of a lack of balance between the public interest and intellectual property owners’ rights. There is the potential for owners to attempt to extend their rights beyond “the purpose of distinguishing or so as to distinguish goods or services.”[15] As Professor David Vaver has noted, maintaining a strong public domain benefits competition, innovation, consumer markets, and the public interest. Intellectual property protection must therefore be carefully circumscribed and should not extend beyond its specified limits.[16] The lack of circumscription for trademarks invites overreach (the potential oppression and extortion mentioned in Hanfstaengl), including in the area of free expression, and the lack of acknowledgement of users creates imbalance. Consequently, it is time that Canadian trademark law recognise a form of fair dealing.

Sebastian Beck-Watt is Senior Editor of the IPilogue and a graduate of Osgoode Hall Law School.

[1] CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13, [2004] 1 SCR 339, at para 48 [CCH].

[2] RSC 1985, c C-42 [Copyright Act].

[3] CCH, ibid. at [48]

[4] �ճ�é��������� v Galerie d'Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR 336, at para 30 [�ճ�é���������].

[5] David Vaver, “Copyright Defenses as User Rights” (2013) 60:4 J.Copyright Soc'y USA 661, at 669.

[6] Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60, [2012] 3 SCR 625, at para 32.

[7] [1894] 3 Ch 109 (CA), at 128.

[8] Canadian Assn of Broadcasters v Society of Composers, Authors and Music Publishers of Canada, [1994] FCJ No 1540, 58 CPR (3d) 190 (FCA), at para 13.

[9] Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772, at para 21 [Mattel].

[10] The University of Alabama Board of Trustees v New Life Art, Inc, Daniel A Moore, 683 F3d 1266, 1269–70 (11th Cir 2012) [Moore].

[11] Cie générale des établissements Michelin - Michelin & Cie v. CAW – Canada, [1997] 2 FC 306, [1996] FCJ No. 1685 (FCT) [Michelin].

[12] Hormel Foods Corp v Jim Henson Prods, 73 F3d 497 (2d Cir 1996) [Hormel].

[13] Copyright Act, supra note 2, s 29-29.2.

[14] RSC 1985, c T-13 [TM Act].

[15] TM Act, supra note 14, s 2(a).

[16] David Vaver, Intellectual Property Law, 2d ed (Toronto: Irwin, 2011) at 23 [Vaver, IP Law].

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Living up to its tough-on-tar��, the Australian government passed the����(TPPA) in December 2011, a result of not finding pre-existing measures as effective as desired in lowering smoking rates. By December 1, 2012, all cigarette packaging in the country will be identical in unembellished, legislated size, shape, and colour (the������). An equally unsightly health warning will cover three-quarters of the front panel, while additional warnings and a quitting hotline claim 90 per cent of the sides and back. Brand, company, and associated names, the only distinguishing feature allowed, will shed their unique typographies for a��, no bigger than point-size 14,����makeover.

Lighting Up: The Constitutional Challenge

Needless to say, the tobacco industry got rather����over the new law. JT International (JTI) and three arms of British American Tobacco (BAT), supported by brethren tobacco-purveying intervenors,����that the��TPPA��mandates amounted to “acquisition of property��from [them] otherwise than on just terms”.����of the Constitution provided grounds for the challenge: as it grants Parliament power to acquire property “on just terms”, courts interpret the provision to mean citizens may challenge any acquisition on terms less than or other than just.

More specifically, the tobacco companies accused the government of unjustly acquiring their intellectual property, in the form of trade-marks, patents,��, literary and artistic works, registered design, trade dress, and goodwill associated with all of the above. The High Court thus faced two issues:

1. Does intellectual property such as trade-marks and goodwill constitute “property” under s. 51(xxxi) of the Constitution?
2. If yes, did the Australian government, via��TPPA��provisions, in fact acquire said property, on other than just terms?

Where There's Smoke, There's Not Necessarily Fire: The Decision

In a decision more multihued than the products in question (comprising five shades of concurrence and one contrasting dissent), the court affirmed that (1) the plaintiffs' intellectual property as described above does constitute “property” under s. 51(xxxi), but (2) the government did not acquire said property, under s. 51(xxxi), by enacting the��TPPA. The following will present the court's reasons taken all together.

I. Putting the property in intellectual property

First, the court agreed that intellectual property constitutes “property” under s. 51(xxxi), and is able to make claim to just terms of acquisition. One opinion suggested uncertainty about goodwill because it already operates under restraints from the common law, unlike statutory intellectual property rights.

II. Taking from the rich...

The court also decided that the government's enactment of��TPPA��amounted to “taking” of property. The provisions of the Act, for all intents and purposes, deprived the companies' trade-marks, copyrights, patents, and registered designs of all value and use. One opinion rejected the companies' argument that they were deprived of the “substance” or “reality” of their property rights, indicating that they could still use brand names, which was the essential part of trade-mark “for purposes of distinguishing”. On the way to the final decision, however, another judge noted the words of Justice Brandeis from the U.S. Supreme Court: “restriction imposed to protect the public health, safety or morals from dangers threatened is not a taking.”

III. ...But not acquired by the poor (or government)

What Parliament takes, Parliament does not necessarily acquire; this is the key to the court's reasoning in��JT International SA.��The majority of judges found that that while a “taking” occurred, the��TPPA, even if it “adversely affects or terminates a pre-existing [property] right”, did not amount to the Australian government's “acquisition” of a proprietary interest in a way that engaged s. 51(xxxi). The tobacco companies retained ownership of the intellectual property rights themselves.

The court went on to reason that the ability to control use of the plaintiffs' trade-marks did not constitute a proprietary interest, as the government “accrued no benefit of a proprietary nature”. Essentially, controlling is not the same as owning, nor is it the same as proprietary interest no matter how liberally interpreted. Continuing in this vein, the court deemed the��TPPA��regulatory rather than proprietary; it was merely an extension of what legislation already allowed Parliament to do with respect to mandating health warnings on tobacco products.

The court rejected the plaintiffs' argument that proprietary benefit resided in: saved costs of additional advertising, fulfillment of��, and the potential of Quitline gaining goodwill. Even if considered advantages, they were not proprietary and would only further the purpose of the legislation.

IV. Stepping Out: The Dissent

Heydon J's dissent held that acquisition under s. 51(xxx) only required “some identifable and measurable countervailing benefit or advantage” and that the government acquired such by not compensating the tobacco companies for their restricted rights. He stated that the��TPPA��“deprives the proprietors of their statutory and common law intellectual property rights and their rights to use the surfaces of their own chattels. It gives new, related rights to the Commonwealth [which control the surfaces of said chattels].” The dissent also raised a floodgates concern, in that the majority decision could allow government to apply similar limits to other products or for other legislative objectives in the public interest.

One Last Puff: Analysis

Potentially problematic aspects of the court's decision include (some might argue): the emphasis on the form of intellectual property rights as opposed to the substance (i.e. the distinction between having a right in theory and being able to exercise it in practice); the ethics of allowing a business to register trade-marks and accepting fees for such, then restricting use of those trade-marks; and potential cognitive dissonance in the law of applying such measures to what is, at the end of the day, a legal activity.

The implications of this case are widespread and enormous. Debates abound over the extent of the��,����������; whether it will induce growth of the��; whether a����is what people think it is; whether the floodgates have opened to plain packaging of food and��; and whether this����international World Trade Organization (WTO)��, just to name a few.

Closer to home, Canada has addressed����in����and��, and the United States recently closed off such a possibility in��.��However, all three decisions rested on freedom of expression grounds, and Canadian law does not include constitutional protection of property.��Meanwhile, the United Kingdom, New Zealand, and����have been����to consider Australia a test case for their own initiatives. Whether or not the��TPPA��was a single unlucky strike upon the multinational industry remains to be seen.

Cynthia Khoo is a JD Candidate at the University of Victoria.

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