Protecting a sound or melody as a trade mark is challenging—applicants must not only accurately represent their sign in a way that meets the expectations of their local Trade Mark Registry, but also prove their sound, noise or jingle is sufficiently distinctive to justify protection.
In this series of posts, we discuss the diverse approaches to registering sound marks in different jurisdictions and the challenges applicants face.
Sound marks in the EU
Under EU law, a trade mark is defined as any sign capable of being represented graphically which distinguishes the goods or services of one undertaking from those of other undertakings. Art 2 European Trade Marks Directive 2008/95/EC. A “sign” has been interpreted broadly to include not only commonly registered signs—words, names or slogans—but also non-traditional intangible signs such as colours, logo designs, 3-dimensional shapes or sounds.
In theory, a sound is therefore registrable as a community trade mark. However, practically there are significant obstacles to registration, for example ensuring a sound is correctly represented in a trade mark application and proving that the sound can distinguish the goods/services of the applicant from those of third parties.
European case law provides some useful guidance for applicants seeking to register sound marks. In Sieckmann, a case concerning an application to register a “fruity” odour as a trade mark relating to advertising services in Germany, the European Court of Justice (ECJ) laid down seven guiding principles on how to graphically represent a non-visual mark: it must be clear, precise, self- contained, easily accessible, intelligible, durable and objective. Sieckmann v Deutsches Patent- und Markenamt (Case C-273/00) [2002] ECR I-11737.
The Sieckmann principles were applied in the leading sound mark infringement case Shield Mark which concerned the validity of several trade marks owned by the trade mark practice Shield Mark BV relating to “the first nine notes of Beethoven’s “Für Elise” and “the crow of a rooster.” Shield Mark BV v Joost Kist, Case C-283/01 [2004] ECR I-14313.
The ECJ held that the graphic representation of certain of Shield Mark’s signs were unclear and did not sufficiently identify the scope of protection sought. The court suggested that a representation of a sound by way of musical notation or written description explaining speed, rhythm and tempo would be adequate. Generic descriptions, onomatopoeia or lists of musical notes(e.g. D#, E, B, C) were considered insufficient as they do not explain the exact noise, timing or pitch of a sound, leaving significant room for interpretation.
The court recognized the difficulty sound mark applicants face when attempting to visually represent a non-visual sign, providing that even if a representation is not immediately clear, if it is easily intelligible allowing parties to reproduce a sound, it would likely be registrable.
Sieckmann—a help or hindrance?
The Sieckmann criteria has arguably raised rather than lowered the difficulty barrier for registering sound marks.
A year after Sieckmann, the OHIM Board of Appeal rejected Metro-Goldwyn-Mayer Lion Corp’s (MGM) application to register a European trade mark for the sound of a lion’s roar heard at the beginning of its feature films since 1928. See Metro-Goldwyn-Mayer Lion Corporation’s Appeal relating to Community trade mark application No. 143 891, Case R 781/1999-4, Decision of OHIM Fourth Board of Appeal of August 25, 2003. Note: In 2008, MGM successfully secured a community sound mark for the lion roar by providing a sound file with its application (CTM 005170113).
Among other reasons, the graphic representation in MGM’s application, comprising a sonogram with text describing “the sound produced by the roar of a lion,” was considered deficient. Similar to a cock crowing, OHIM noted that lions roar differently—in volume, pitch and duration – and as such MGM’s sonogram did not mirror the exact roar MGM was seeking to protect.
The OHIM Board reached a similar conclusion a few years later in the TARZAN YELL case. Edgar Rice Burroughs Inc v OHIM (R708/2006-4). A more detailed representation, referring to a spectrogram with sound wave images depicting a yell with accompanying text was not considered easily accessible; it was unclear whether a voice or instrument would be needed to reproduce the sound, making it difficult to replicate.
Certain well-known sound mark applications have been accepted by OHIM, for example the Nokia Corporation successfully registered its signature Nokia ringtone as a community trade mark, graphically representing the sound by way of a musical score indicating the pitch and pace of the melody. Twentieth Century Fox Film Corporation, McDonalds and Intel have followed suit, using detailed score sheets to secure community protection for distinctive musical themes for films and advertising jingles respectively.
The acceptance of sound files with sound mark applications has also led to the registration of certain marks which would have otherwise fallen at the graphic representation hurdle—a good example is MGM’s successful second attempt community sound mark application for its lion’s roar in 2008, comprising a sound file and detailed description of the sound.
Nevertheless, the clear difficulty of registering non-traditional marks in comparison to traditional word marks is acknowledged by OHIM—even if a sound is capable of being graphically represented in a clear, precise and self-contained way, non-traditional marks still face the further obstacle of proving they have distinctive character worthy of protection.
Commentary
In March 2013, the European Commission presented its proposals for reform of the current European Trade Mark legislation aimed at creating a more harmonized and cost efficient trade mark registration system across the EU. The proposed changes include, among other things, specific inclusion of sound marks in the community trade mark definition and the removal of the requirement for applicants to graphically represent signs. If adopted, this will likely open the way for more non-traditional trade mark applications and perhaps result in a more straightforward sound mark registration process. We await further updates on the implementation of these measures in early 2015.
Sources: Art 2 European Trade Marks Directive 2008/95/EC; Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00) [2002] ECR I-11737; Metro-Goldwyn-Mayer Lion Corporation’, Community trade mark application No. 143 891, Metro-Goldwyn-Mayer Case R 781/1999-4; Edgar Rice Burroughs Inc v OHIM (R708/2006-4).
