Are sound trademarks subject to additional rules?

Since 1 October 2017, the European Trademark Directive and the Union Trademark Regulation (UTR), under the umbrella of the Trademark Reform Package, have been reformed. As a result, the requirement that a distinctive sign be ‘capable of graphic representation’ was dropped. This amendment of the Trademark Directive was also intended to make it easier to register signs as sound trademarks.

Before removing the requirement that a sign be ‘capable of graphic representation’, sound trademarks could only be registered by means of a stave. The European Court of Justice ruled in the Shield Mark case that a sound can be registered as a trademark if:

“it is represented by means of a stave divided into measures containing, among other things, a key, musical notes and rests whose shape indicates relative value, and possible alterations”.

Obtaining trademark protection for, for instance, the Für Elise jingle was preceded by a long history of multiple unsuccessful attempts to register sound trademarks in various ways (e.g., by using sonograms, written descriptions, etc). Think, for example, of the famous yell of Tarzan, the rumbling of the Harley Davidson and the roar of the MGM lion. However, these applications were found to be insufficiently precise (Sieckmann case) so that the sound was not entitled to trademark protection.

Sound trademarks can still be registered using a stave, but nowadays, it is also possible by using an mp3 file. Although the registration procedure for sound trademarks has been simplified, not all legal hurdles have been removed. The sign must still meet all the other requirements in order to qualify. One of those requirements is for the sign to be distinctive. This means that the public immediately recognizes a sound as a sign "that refers to the commercial origin of the company's goods". According to the guidelines of the European Union Intellectual Property Office (EUIPO), this does not automatically apply - unlike for words or figurative trademarks - to a sign consisting only of one sound. In other words: a sound does not automatically have distinctiveness. Only a sound that differs in a "significant way from the norm or from what is customary in the sector concerned," and that can perform the essential function of origin marking, possesses distinctiveness (Article 7(1)(b) UTR). So it seems that in practice, there is a slightly higher threshold for the registration of sounds than for other kinds of traditional trademarks.

According to the EUIPO guidelines, the following sounds are unlikely to be accepted as sound trademarks:
a.    very simple pieces of music consisting of only one or two notes (see examples below);
b.    sounds in the public domain (e.g., an anthem);
c.    sounds that are too long to be considered origin markers;
d.    sounds usually associated with certain goods and services (see example below).

The entry into force of the new European Trademark Directive is resulting in an increase in the number of applications for sound trademarks. The EUIPO has already received 146 applications for sound trademarks since 2017. To illustrate, in the same time frame before the introduction of the reform, 87 sound trademark applications were submitted. We are talking about an increase of 67.81%.

Of the 146 sound trademark applications, 23 have currently been denied and 11 with­drawn. The vast majority of the rejected sound trademarks were stranded on one of the four reasons listed above. 

For example, the sound trademark filed by Piaggio & C. S.P.A for Electrically operated scooters was recently rejected for lack of distinctiveness.

Deutsche Bank Aktiengesellschaft tried in vain to register the ("Ba-Bing") sound once a customer successfully paid contactless in a store. The EUIPO found the tone too simple and purely functional. 

Of the 146 sound trademark applications since 2017, 97 have now been formally registered, including the sound trademarks of Munich Airport and FC Barcelona.

A sound trademark application filed by an Irish producer for beverage cans and bottles for the sizzling sound of a beverage can being opened was rejected by the EUIPO and also recently by the Court of Justice of the European Union. That sound is considered a purely technical and functional element that is not sufficiently distinctive as such to qualify as a trademark.

Experience shows that once a sound trademark is registered, the trademark owner cannot simply roll out the sound trademark internationally. Not all countries affiliated with the Madrid International Registration System facilitate the registration of a sound trademark. To avoid any surprises, it is therefore advisable to discuss the registration strategy with a trademark attorney before submitting a sound trademark.

When talking to a trademark attorney, it is important to discuss the following issues:

• Does my sound trademark meet the requirements to be registered as one?
• Is my sound trademark available for use and/or registration?
• How can I best register a particular sound?
• How does the monitoring of a registered sound trademark work?
  
  

Our experts are happy to advise you on the registration of a sound trademark. For more information, do not hesitate to get in touch with Raquel Alvarez.