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Unconventional Trade Marks: Are “sound marks” trade marks or copyrights? (Part 2)

Written by Sandra Ong on 15 July 2013

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Graphic Representation of Sound Trade Marks

In the case of Shield, C-283/01, the European Court of Justice (ECJ) held that sounds marks must be regarded as trade mark themselves, nevertheless capable of fulfilling the requirements stated in s.32 (2)(d) of the Act as being graphically represented. In Shield, the Court ruled that a graphical representation in mere text form such as ‘the first nine notes of "Für Elise" or "the crow of a rooster" cannot constitute a graphical representation of that sign as it is not possible for the public to determine whether the protected sign is the actual sound or noise. Graphic representation shown by musical annotation, representing the speed, rhythm, and tempo of the sound is considered as proper graphical representation.
Similar to registering an ordinary trade mark, a sound mark needs to be backed up with evidence of factual distinctiveness such as common usage, and duration of usage of sound. The importance lies in how distinctive the sound mark is to the particular business. Standards should be reflected on how difficult it would be to replicate the sound. The more distinctive the sound, the harder it would be for anyone to infringe it. The distinctiveness of the sound is the imperative feature of a Sound Trade Mark.

Other Jurisdiction

UK currently relies on EU directives and an International Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which sets out minimum standards for Intellectual Property. Unlike countries such as Australia and Singapore where sounds are recognised as a mark capable of being graphically represented in their own Trade Mark Act, UK legislation does not include sounds as being capable of being graphically represented. The case of Shield seems to be the sole authority concerning registration of a Sound Trade Mark. In United States, the test for the distinctiveness of a sound is shown in common law standard.

Conclusion

Although a Sound Trade Mark faces numerous challenges, in practice, on its distinctiveness nature and the ability of being graphically represented, interested proprietors hoping to rely on sounds as trade marks can in effect register it as a trade mark, therefore potentially enjoy rights that a trade mark gives.

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