• EUROPEAN PERSPECTIVES

    The Sound of Music is Registrable

    In a seminal judgement (Shield Mark v Joost Kist), the European Court of Justice has decided that sound marks are registrable as trade marks under EU trade mark law, provided they are represented in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable and objective (the Sieckmann criteria).

    The facts of the case are set out below. Shield Mark owned 14 Benelux trade mark registrations for sound marks in classes 9, 16, 35, 41 and 42. Eleven of those registrations related to various graphic representations of the first nine notes of Beethoven’s Für Elise. The representations included the notes set out on a musical stave, as well as the notes represented by letters (i.e. E, D#, E, D#, E, B, D, C, A). The remaining three registrations represented the sound of a cock crowing. In one case, this was by simple reference to the mark being the sound of the cock crow. In the other two cases, the representation was onomatopoeic. In Holland, it seems that the denomination kukelekuuuuu immediately brings a cock crow to mind.

    Shield Mark used both the Beethoven piece and the cock crow to advertise their legal services.

    Mr Kist is a communications consultant who organises seminars on, amongst other subjects, intellectual property. About 2-3 years after Shield Mark began using their sound marks, Mr Kist ran an advertising campaign for his services which employed both the first nine notes of Für Elise and the sound of a cock crowing.

    Shield Mark sued him for trade mark infringement and unfair competition. In the first instance, Shield Mark succeeded on the unfair competition ground but failed in its trade mark infringement action. According to the Court, Benelux trade mark law did not allow the registration of sounds as trade marks. Shield Mark appealed to the Hoge Raad who, in turn, stayed the proceedings pending a ruling from the ECJ on the registrability of sound marks under the harmonised trade mark law of the EU (Directive 89/104/EEC). The ECJ ruled as follows:

    • Article 2 of the Directive states that

      “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”. However, this list of signs in Article 2 is not exhaustive. In particular, sounds may constitute a trade mark, under EU trade mark law, provided they can be represented graphically in a manner that meets the requirements of Article 2.

    • Although it was for the national Court to decide on acceptable forms of graphical representation, the ECJ offered this guidance.

      - A stave divided into bars and showing, in particular, a clef, a time signature, musical notes, accidentals (sharp, flat, natural) and rests is a representation that meets the Sieckmann criteria set by the ECJ.

      - A mere sequence of notes (e.g. E, D#, E, etc), is not, without more, an adequate representation of a sound mark.

      - A sound represented by, for example, a cock crowing or an onomatopoeic version of such a sound (in Dutch, Kukelekuuuuu) is also not, without more, an adequate graphical representation.

     

    Comment

    In this multi-media age, sound marks can be very powerful indicators of origin, particularly in TV and radio advertising campaigns. For example, the use of part of the overture to Verdi’s opera La Forza del Destino has, at least in the UK, become synonymous with the premium price lager Stella Artois. This ECJ decision is therefore important and may become of increasing relevance as the value of such sound marks is more widely recognised.

    Whilst the protection of sound marks in the form of musical notation should now be fairly straightforward in the EU, provided the mark meets the other requirements for registration, the protection of non-musical sounds, such as a cock crowing, remains problematical.

    In this regard, a recent OHIM appeal (R781/1999-4) dealing with MGM’s attempt to register the sound of a lion roaring (CTM143891) may offer a way forward. In that case, the Appeal Board rejected the applicant’s attempt to register a waveform of the sound. However, the Board appeared to accept that, in principle, the sound of a lion roaring could be registered as a sound mark and that a sound spectrogram (or sonogram), which is a 3-D depiction of the distribution of a signal’s frequency content against frequency and time, could constitute an adequate graphical representation. It remains to be seen whether such a non-traditional sound is registrable in the EU and, if so, who will be the first to achieve it.