Sound marks - Are They Registrable?

28 November 2003

SOUND MARKS – ARE THEY REGISTRABLE?

In a recent judgement, from 27 November 2003, Shield Mark BV v Joost Kist h.o.d.n. Memex
(C-283/01) the European Court of Justice (ECJ), gave its answers to two questions on Article 2 of
First Council Directive 89/104/EEC of 21 December 1988 to Approximate the Laws of the Member
States Relating to Trade Marks (‘the Directive’). The two questions were referred to the ECJ for
preliminary ruling by the Hoge Raad der Nederlanden (‘Netherlands’) and related to a dispute
involving sound trade marks.

Facts

Shield Mark was the holder of 14 sound trade marks registered with the Benelux Trade Marks Office
(‘BBM’). Mr Kist during an advertising campaign used a melody identical to one of Shield Mark’s
sound trade marks (the melody consisted of the first nine notes of Für Elise) and sold a computer
program which, when starting up, emits a cockcrow, another sound trade mark registered by Shield
Mark. Consequently the latter brought an action against Mr Kist for infringement of its trade mark
and unfair competition. Shield Mark’s application was granted so far as it was based on the law of
civil responsibility, but dismissed it in so far as it was based on trade marks law, on the ground
that it was the intention of the Governments of the Member States of Benelux to refuse to register
sounds as trade marks (Judgment paragraphs 14-24).

Questions (Judgment paragraph 25)

Shield Mark appealed to the Hoge Raad der Nederlanden. The latter referred two questions to the
ECJ:

1. (a) Must Article 2 of the Directive be interpreted as precluding sounds or noises from
being regarded as trade marks?

(b) If the answer to question 1(a) is in the negative, does the system established by the
Directive require that sounds or noises must be capable of being regarded as trade marks?

2. (a) If the answer to question 1(a) is in the negative, what requirements does the
Directive lay down for sound marks as regards the reference in Article 2 to the need for the sign
to be capable of being represented graphically and, in conjunction therewith, as regards the way
in which the registration of such a trade mark must take place?

(b) In particular, are the requirements referred to in (a) satisfied if the sound or the noise is
registered in one of the following forms: musical notes, a written description in the form of an
onomatopoeia, written description in some other form, a graphical representation such as a
sonogram, a sound recording annexed to the registration form, a digital recording accessible via
the internet, a combination of those methods and some other form and, if so, which?

Answer to the first question (Judgment paragraphs 26-41)

What was at stake here was the interpretation to be given to Article 2 of the Directive as regards
signs consisting of sounds or noises: can they be registered as  trade marks?

Article 2 states:

“A trade mark may consist of any sign capable of being represented graphically, particularly
words, including personal names, designs, letters, numerals, the shape of goods or of their
packaging, provided that such signs are capable of distinguishing the goods or services of one
undertaking from those of other undertakings”

According to that Article any sign capable of fulfilling the two basic requirements of 1. being
capable of distinguishing and 2. being capable of graphic representation  can qualify for
registration as a trade mark (provided that the other legal requirement are fulfilled).

The Court ruled that:

“Since the list of signs of which a trade mark may consist in Article 2 of the Directive is not
limitative, the Commission infers that signs consisting of sounds or noises are in principle
capable of being registered as trade marks, on condition that they are capable of distinguishing
goods or services without any risk of confusion and that they are capable of being represented
graphically in a clear, precise and stable manner which allows third parties to understand without
difficulty what trade mark is being protected”

In other words signs consisting of sounds or noises can qualify for trade mark registration
provided they fulfil,  amongst other things, the two basic requirement laid down in Article 2.

Answer to the second question (Judgment paragraphs 42-64)

After ruling that signs consisting of sounds or noises can qualify for trade mark registration,
the Court was asked to state the conditions on which such signs are capable of being represented
graphically. In particular whether musical notes, a written description in the form of
onomatopoeia, a written description in some other form, a graphical representation such as a
sonogram, a sound recording annexed to the registration form, a digital recording accessible via
the internet, a combination of those methods, or any other form meet the requirements of graphical
representation.

The Court held that:

- Article 2 of the Directive must be interpreted as meaning that a trade mark may consist
of a sign which is not in itself capable of being perceived visually, provided that it can be
represented graphically, particularly by means of images, lines or characters, and that its
representation is clear, precise, self-contained, easily accessible, intelligible, durable and
objective (the Court applies here its case law on olfactory signs (see Sieckmann C-273/00) to
signs consisting of sounds or noises).

- in the case of a sound sign, those requirements are not satisfied when the sign is
represented graphically by means of a description using the written language, such as an
indication that the sign consists of the notes going to make up a musical work, or the indication
that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means
of a sequence of musical notes, without more. On the other hand, those requirements are satisfied
where the sign is represented by a stave divided into measures and showing, in particular, a clef,
musical notes and rests whose form indicates the relative value and, where necessary, accidentals.

Comments

This ruling is a clear victory for the advocates of the so-called ‘new trade marks’ such as
sounds, smells and shapes. The ECJ recognised that signs consisting of sounds or noises can
qualify for trade mark registration and that the Member States cannot prohibit, in their national
law, registration for such signs.

Yet not every sound or noise can qualify for registration. They have to fulfil, among other
things, the two basic requirements laid down in Article 2 one of them being ‘capable of being
represented graphically’. The Court held that, in relation to such signs, the latter requirement
is fulfilled “particularly by means of images, lines or characters, and that its representation is
clear, precise, self-contained, easily accessible, intelligible, durable and objective”. As a way
of example the Court held that such requirement is satisfied where the sign is represented by a
stave divided into measures and showing, in particular, a clef, musical notes and rests whose form
indicates the relative value and, where necessary, accidentals.

MP

For more information please contact daniel.doherty@lawdit.co.uk