Registration of sounds as trade marks

In the case of Shield Mark BV- Joost Kist, Case C-283/01, the European Court of Justice has given a clear judgment on the extent to which sounds may be registered as trade marks, providing detailed guidance on the way in which such marks must be represented when filing an application. In particular, it confirms that an application must state clearly that the mark is intended to be a sound mark and that musical notation should be adequate to communicate the sound in a sufficiently clear and precise way. Other forms of graphic representation are likely to be inadequate.

Shield Mark BV –v- Joost Kist, ECJ Case C-283/01, 27 November 2003

The case was originally brought in the Dutch courts by Shield Mark BV, an intellectual property consultancy which had registered various marks at the Benelux Trade Marks Office. Some marks consisted of a musical stave depicting the first notes of Beethoven's Für Elise, and others of the words "the first nine notes of Für Elise" and of the sequence of notes "E, D#, E, D#, E, B, D, C, A". Shield Mark had also registered marks consisting of the word "Kukelekuuuuu" (apparently the Dutch word for "Cock-a-doodle-do") and the words "a cockcrow". It used both the Für Elise melody and a cockcrow sound in its marketing, for example in radio advertisements and on computer discs.

The defendant, Mr Kist, a communications consultant, organised seminars on intellectual property and marketing. During an advertising campaign in 1995, he used the Für Elise melody and also sold a computer program which emitted the sound of a cockcrow. Shield Mark sued Mr Kist in Holland for infringement of its trade marks and unfair competition. The Dutch court at first instance dismissed the action insofar as it was based on trade marks law, on the grounds that it had been the intention of the Benelux government to refuse to register sounds as trade marks. Shield Mark appealed and the Dutch courts then referred questions to the ECJ concerning the extent to which sounds could be registered as trade marks.

The ECJ held that it was possible to register sounds as trade marks provided that they could be represented in a sufficiently accurate way. In particular, it found as follows:

(1) Having regard to the language of the Trade Marks Directive, sounds (although not expressly mentioned) could constitute registered trade marks on condition that they could be represented graphically and were capable of distinguishing the goods or services of one undertaking from those of other undertakings.

(2) Following the ECJ case of Sieckmann (Case 230/00), which considered a "smell" mark the Trade Marks 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.

(3) A sign cannot be registered as a sound mark where the applicant fails to state on his application form that the sign must be understood as being a sound mark.

(4) As regards the representation of a sound sign by a description using the written language, such as "the first nine notes of Für Elise" or "a cockcrow", these representations lack precision and clarity and therefore do not make it possible to determine the scope of the protection sought. Accordingly, such signs cannot constitute a graphical representation of that sign.

(5) As regards an onomatopoeia (eg. cock-a-doodle-do) there is a lack of consistency between the onomatopoeia itself, as pronounced, and the actual sound or noise which it purports to imitate. Furthermore, an onomatopoeia may be perceived differently, particularly as between different Member States. That is so in the case of the Dutch onomatopoeia, Kukelekuuuuu, which seeks to transcribe a cockcrow, and which is very different from the corresponding sounds in the other languages. Consequently, a simple onomatopoeia cannot, without more, constitute a graphical representation of the sound or noise of which it purports to be the phonetic description.

(6) As regards musical notes, a sequence of notes without more, such as E, D#, E, D#, E, B, D, C, A, also does not constitute a graphical representation from such a description, as it is not possible to determine the pitch and the duration of the sounds which are essential parameters for the purposes of defining the melody.

(7) However, a stave divided into bars and showing classic musical notation which determines the pitch and duration of the sounds, may constitute a faithful representation of the melody. This mode of graphical representation of the sounds meets the requirements of the case-law of the Court and even if it is not immediately intelligible to everyone, the fact remains that it may be easily intelligible.

(8) The ECJ refused to comment on the adequacy of a sonogram, a sound recording annexed to the trade mark application or a digital recording accessible from the internet, as these were hypothetical on the facts.

This is the first detailed ECJ case on sound marks. In the UK the Registry guidance is similar, namely that the name of a musical work (however well known) will not suffice, but that musical notation will suffice as a graphical representation.

Note, however, that this case deals with sound marks in principle and that there may still be other obstacles to registration, in particular a lack of distinctiveness.

For further information, please contact Stephen Whybrow on 0207 367 2175 or at [email protected] , or Lucy Kilshaw on 0207 367 2044 or at [email protected]