2 December 2019

Sound Marks

A sound trade mark is a trade mark consisting exclusively of a sound or combination of sounds. It differs from a mark which combines sound with e.g. movement, which should be applied for at the European Intellectual Property Office (EUIPO) as a multimedia mark.

With effect from 1 October 2017, as part of its major reform of European Union trade marks (EUTMs), the EUIPO dropped its requirement that an application for a sound trade mark needed to contain a graphical representation of the sound. From 1 October 2017 onwards, applications for sound marks filed with the EUIPO instead required either a) an audio file reproducing the sound or b) an accurate representation of the sound in musical notation. ‘Accurate musical notation’ means that the representation must include all the elements necessary for interpreting the melody i.e. pitch, tempo and any lyrics. Any audio file submitted to the EUIPO must be in MP3 format, and its size cannot exceed two megabytes. The EUIPO does not permit the sound to stream or loop.

Despite the changes introduced in 2017, which should have made the process of applying to register a sound mark as an EUTM easier, there are still less than 300 registered sound trade marks on the EUIPO’s register. Given that over 2 million applications for EUTMs have been filed since the EUIPO opened its register in 1996, this is a tiny percentage.

Amongst those 200-odd sound mark registrations are McDonald’s I’m lovin’ it jingle, Metro-Goldwin-Mayer Lion Corporation’s iconic lion roar and Twentieth Century Fox Film Corporation’s equally iconic fanfare. However, setting aside these iconic sounds, surely there must be many other sounds distinctive enough to be capable of denoting the origin of goods and services and therefore capable of trade mark registration?

The General Court held in its 2016 decision in case T-408/15 (SON D’UN JINGLE SONORE PLIM) that the criteria for assessing the distinctive character of a sound mark are no different from those applicable to other categories of trade mark. However, decisions issued on sound marks since the introduction of the 2017 changes show the fine line that must be walked by sound marks between being (a) sufficiently distinctive but (b) not overly short or long. EUTM application No 017700361 in the name of Futbol Club Barcelona for an audio recording of the word Barça (the Catalan abbreviated name for the city of Barcelona) was allowed to proceed to registration, without any evidence of acquired distinctiveness, for a range of goods and services.

Paris Bedding successfully registered a sound mark of approximately only two seconds length in 2018 in respect of furniture and fabric and related services.

On the other hand, EUTM Application 017880808 filed by the Austrian electricity company, EVN AG, for a sound lasting just over three seconds was initially refused on the basis that no real melody could be remembered by the relevant public. The EUIPO also held that the sound was “just a kind of pulsation with an Arpeggio over a single repeated base note” and that “such sounds are widespread in electronic devices”. However, the EUIPO’s Board of Appeal (BOA) disagreed and reversed the refusal, finding that the sound mark contained a particular melody and a recognisable structure and that it was memorable.
The length of a sound mark, on the other hand, can lead to the sound mark being denied registration. EUTM Application No 17277864 (filed with a 39-second long audio file) covering telecommunications apparatus and services was refused in 2018 on the basis that the mark applied for was too long and complex.

A relationship between the mark and the goods and services applied for can be an obstacle to registration, just as with a word mark. EUTM Application No. 17889555 filed by the Italian two-wheel motor manufacturer, Piaggio, for “electrically operated scooters” was refused on the basis that, since it would be perceived as a mere burst of engine noise, it was devoid of any distinctive character. Interestingly, the mark was not refused by the EUIPO under Article 7(1)(e) of the European Trade Mark Regulation on the basis that it consists exclusively of a characteristic of the goods themselves.

EUTM Applications 018024550 and 018024555, both filed by Japan Tobacco International in February 2019 for a range of goods related to electronic cigarettes, including lighters for smokers, were refused on the basis that the sound marks (which sound like a cigarette lighter igniting) were devoid of distinctive character.

In Case R0530/2019 the BOA reconsidered the refusal of an application to register a sound mark in classes 6, 29, 30, 32 and 33. The sound was of a container of carbonated drink being opened. In its appeal, the applicant argued that the EUIPO had failed to take account, in particular, of the surprising and unexpected effect of the time break between the opening sound and the unusual long sound pattern that followed which made the mark memorable. The applicant also argued that the grounds for the refusal did not, in any case, apply to those goods applied for which do not generally or never contain carbon dioxide e.g. milk products, coffee, tea and cocoa. The BOA found that the sound mark applied for would only be heard after the goods were opened, and thus generally only after purchase.

The BOA held that if the sound is only heard after use of the product has begun it cannot serve as a reference for consumers making a purchasing decision. The BOA also held that the Examiner had correctly pointed out that, in cases in which the sound applied for reproduces a sound inherent in the goods or their use, the case law regarding signs that represent the external appearance of a product or of its packaging can be applied. The BOA agreed that, therefore, in this case, the sound applied for would need to depart significantly from the norm or customs of the sector in order to fulfil a function of indicating origin and hence display the required distinctive character. The BOA agreed that the sound applied for did not do so.

The BOA also agreed that since milk, coffee, tea, etc,. could possibly be produced in fizzy versions this was sufficient to support the objection raised. The BOA held that the sound applied for did not depart sufficiently from comparable noises which arise naturally when opening a tin of carbonated drink, so as to be able to be perceived by consumers as an indication of origin. The BOA held that contrary to the view taken by the applicant, the break between the noise of the opening of the can and the sound that follows is not resonant enough to distinguish the mark applied for sufficiently from comparable noises. The BOA’s decision is being appealed to the General Court.

Registration of smell trade marks at the EUIPO is in practical terms not possible because of the difficulties in satisfying the requirement to represent the smell mark in a precise, durable and easily accessible form. There are no equivalent issues for its other non-traditional trade mark cousin – the sound trade mark. If part of your branding is the sound of your jingle or the unusual sound produced by your product, consider protecting it by trade mark registration to stop others copying this unique selling point!