Unconventional Trade Marks: Are “sound marks” trade marks or copyrights? (Part 1)
Written by Sandra Ong on 15 July 2013« Return to Reading Room
It is not bizarre for a sound to be recognised as a mark or an indication of a particular business. The sound of a bell from an Ice-cream Man’s truck, or the sound of a horn coming from an approaching Rag and Bone Man’s lorry, or sound of church bells ringing are sounds everyone would recognise. They are sounds capable of distinguishing the goods or services of the proprietor.
Such is the purpose of a trade mark. For a trade mark to be registrable in the UK, the mark, theoretically, would have to meet the requirement in s.1 (1) of the Trade Marks Act 1994 (the Act) which states that the sign be capable of being graphically represented, distinguishing goods or services of the interested proprietor.
For an application for a trade mark to be successful, the requirement in s.32 (2)(d) of the Act, which is to contain graphical representation of a trade mark, is to be fulfilled. Therefore, unconventional marks such as smells, sounds, holograms, all of which are capable of being representative of particular goods or services, may not be considered as being “graphically” represented. Registering a “sound” as a trade mark may then face an objection with the UK Intellectual Property Office.
What is a “Sound Trade Mark”?
Unlike an ordinary trade mark, sounds are not capable of being represented by sight however it is still distinguishable by hearing. A Sound Trade Mark can be a registrable trade mark so long as it fulfils the statutory requirements.
Examples of a Sound Trade Mark would famously include MacDonald’s “I’m Lovin’ It” jingle, or even Nokia’s tune.
Difficulties in practice
S.1 of the Act does not expressly include “sounds” or “smells” as being sign capable of distinguishing for the purposes of a registrable trade mark. The difficulty lies in representing sounds as being clear, precise, easily accessible, and intangible on paper work.
The nature of sounds would usually be protected by copyright and not trade mark. Unlike copyright, which aims usually to protect artists’ works therefore not restricting to a form of medium, registering a trade mark would be better suited for protecting recognisable sounds capable of representing a distinguished business. A simple sound is not descriptive, yet it still can be distinctive, fulfilling the purpose of a trade mark.
How distinctive should a character of a sound be? Should the sound be musically annotated on paper or recorded mp3? If then, how accessible would it be? How easy can such sounds be repeated? Should copyright be used as evidence of a sound in order to register it as a trade mark?
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