18 November 2021

Protection of Sounds, Jingles and Mogos

Although it has been possible to register sounds as trade marks for many years, very few have been protected.

Although it has been possible to register sounds as trade marks for many years, very few have been protected.

While it is now easier to file applications for sound marks, it is still challenging to register sounds as trade marks. There are two issues to deal with:

1. Graphic representation of the sound Many of the sound marks which have been registered are pieces of music and these can be represented by transposing the sound on to a score.

Examples of registered sounds can be seen below:

However, more unusual sounds can be more difficult to represent graphically. The introduction of MP3 and sound files has made it easier to represent a sound, particularly very short jingles, pronunciation of spoken words, and so on. An example is the well-known “Simples” sound mark protected by Compare The Market Limited:

2. Distinctive character of the sound

A sound mark must meet the same requirements of other more traditional trade marks, in that it must “distinguish goods and services of one undertaking from those of other undertakings”. Therefore, a sound must not describe the goods or services for which registration is sought. For example, while distinctive for the production of movies, the famous Metro-Goldwyn-Mayer Lion
Corporation’s (MGM) iconic lion roar would probably not be accepted for safari holiday services. Similarly, the sound of the Merlin engine in the Spitfire plane would probably not succeed as a trade mark for airline services.

If a sound lacks distinctive character as a new and unused mark, it can acquire distinctive character through use over a period of time, and it could be that the amount of advertising and promotion required for some sound marks to become distinctive may be a reason why brand owners have traditionally not protected them in great numbers.

Recent case study

We recently filed a comparable rights application at the UKIPO based on European Union application still pending after the end of the Brexit transition period on 31 December 2020. The application was for a jingle sound, and is reproduced below:

The application was objected to on the basis that it was devoid of any distinctive character. In particular, the examiner stated that the reason for the lack of distinctive character was because “the mark would be perceived first and foremost as a simple sound rather than a brand emanating from a single source of origin”.

Similar objections had originally been raised against the EU application and these had been overcome on appeal. We therefore used some of the arguments from the EU appeal and threw in a few of our own and were delighted when the examiner changed his mind due to our “well thought out response” and agreed the mark could be accepted for registration. While this article is not the place to reproduce our detailed arguments, it is interesting to note:

  • A musical sound consisting of a short sequence of sounds can function as a trade mark to designate origin.
  • Indeed, a musical jingle or mogo (musical logo) should ideally be short, so that it is easy to remember, is catchy, and has a quick recognition value.
  • A sound may be simple, but this does not prevent it from being distinctive and a unique identifier of a brand owner’s goods and services.

The future for sound marks

Despite being in the profession for nearly 40 years, this is the writer’s first foray into protection of a sound mark. However, we believe that sound marks are likely to become more popular in the future, particularly in our increasingly multi-media age. With our younger consumers in particular engaging in more virtual shopping experiences on their smartphones and tablets, sound marks and other multimedia brands, such as motion and 3D marks, will be used more and more.

Another driver for an increase in sound marks is the popularity of the virtual assistant in our homes. A large part of the population now has a virtual assistant device (such as Amazon’s Alexa), which means that sound marks of all kinds will become an increasingly valuable part of brand owners’ portfolios.

Of course, the enforcement of sound marks is likely to be far more challenging than for traditional trade marks. It is probable that a sound would have to be identical or virtually the same as the registered version for there to be a likelihood of confusion.

To conclude, if you have a sound, catchy jingle, or mogo used as part of your brand, add it to your portfolio. It could become as iconic as MGM’s Leo the Lion.