December 2003
ECJ Makes Sound Decision on Trade Marks
When we think of a trade mark, what usually comes to mind is a name such as Coca-Cola or a sign like the Channel logo. However, the rule is that anything can be registered as a trade mark, so long as it is capable of being represented graphically. Intel's famous sound arrangement used on their adverts for their Pentium Processors was registered as a trade mark in the UK in October 1997. In December last year, the European Court of Justice held in the case of Sieckmann that a smell could be registered on the basis that the symbol creating the smell could be represented by its chemical formula. Until recently, it had not been decided whether a European Community Trade Mark could be registered. The issue was resolved at the end of November in the case of Shield Mark BV.
In Shield Mark BV, the company concerned had attempted to register the opening bars of Beethoven's Fur Elise, and the crow of a cockerel as a Benelux trade mark. The Netherlands court who were hearing the application referred the matter to the European Court of Justice for clarification as to what could be registered. The court followed its reasoning in the Sieckmann case that where a trade mark cannot be seen itself but is capable of being expressed graphically, that expression must be clear, precise, self contained, easily accessible, intelligible, durable and objective.
So what does this mean for sounds? The court stated that written descriptions could not be registered as they lack precision. Similarly, the use of onomatopoeia, as Shield Mark BV attempted by using the Dutch phonetic sound Kukelekuuuuu, would be unregistrable as the phonetic sound could be pronounced differently. This was particularly apparent as different languages have different onomatopoeia for a cock crowing such as in English where it is usually denoted using the sound cockadoodle-do. Musical notes in a written format (such as E, D#, E, D#, E, B, D, C, A for Fur Elise) were also considered to imprecise as they said nothing as to the pitch, length of notes or rests involved.
The use of digital sound recordings and sonograms were also mentioned, but as Shield Mark BV did not raise them, they were not considered in the judgment. The court held that the only way on the particular facts of this case that a sound could be recorded was as written music, using a stave, a clef, musical notes and rests, showing relative value of the notes, pitch and duration. As a result, the musical composition, Fur Elise, could be registered, but the cockerel crowing could not.
BRIFFA Comment:
Music is usually protected by copyright, but it is also possible to use sounds to indicate the origins of goods and services. For example, the short jingle used by Intel brings to mind their products, and if another manufacturer of computer products were to use a similar sound, it would lead customers to associate their product with Intel. As such, it is right that sounds can be registered as trade marks. The result of Shield Mark adds value to the Community Trade Mark, showing it to be a useful commercial tool with the ability to meet the needs of business.