Written by Mark Eiffe | February 24, 2023
It can be very powerful for a company to have a sound that is synonymous with its brand. Without anything being said, a consumer can hear a few notes or a short jingle and may then instantly recall their associated feelings towards that brand.
For example, I recently learned that a man by the name of Tohru Okada died on the 14th February 2023. I had not heard of him before, but if you’re a fan of video games, or you have owned any of the Playstation consoles since 1994, you’ll recognise the iconic ‘zing’ when you switch the device on, which Okada-san composed.
This led me to think of other iconic sounds. Not music, or jingles per se, but sounds that bear the characteristics of a trade mark, i.e. they are a ‘sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and is capable of being represented on the register’.
If a sound can be represented by musical notation, then it’s capable of being recorded on the trade mark register.
But there are difficulties. Sound marks (along with motion marks, hologram marks and even olfactory marks) could be described as ‘unconventional’ trade marks, and have been very rarely accepted on to the register of trade marks in European countries or the EUIPO itself, up till recently.
In one high-profile case, Globo Comunicação e Participações S/A (“Globo”) found it difficult to register a sound as a European trade mark, largely because of the requirements at the time: it had to be capable of graphical representation, it had to distinguish the businesses’ goods or services from those of other businesses, and it could not lack distinctive character.
Recent EU trade mark reforms have made it easier to register sound trade marks. ‘Sound’ is now included in the definition of a European trade mark, and the graphical representation requirement has been replaced in favour of a test of clarity and precision (note: these reforms apply in the UK post-Brexit).
Therefore, sounds that, up until recently, had to be able to be represented graphically by musical annotation, such as Audi’s iconic ‘heartbeat’, can now instead be uploaded to the EUIPO register as a digital sound file, such as Volkswagen’s. Other examples available on the US Patent and Trademark Office website are the Apple MacBook startup sound and the McDonald’s five-note jingle.
Because trade marks no longer need to be represented ‘graphically’ on the register, they only need to be ‘capable of representation’ which widened the scope for new ‘unconventional’ mark types. However, it’s often harder to show that these marks demonstrate sufficient distinctive character. In fact, the UKIPO didn’t grant its first unconventional mark until 2019, and the IPOI has yet to register a sound mark.
A sound mark must be non-functional in nature (that is, non-essential to the operation of the product in question), non-descriptive and not deceptively misdescriptive. A functional mark would be the sound an alarm clock makes when it goes off at the pre-set time. Sound marks must also apply only to the product for which they are being registered to avoid consumer confusion.
If a sound is just a short combination of simple notes then the application may be refused by the examiner for lack of distinctiveness:
Before filing for trade mark registration, it is key to develop a final version of the sound mark that resonates well with consumers and reflects the image that you want your brand to convey. It may be wise to test your audio recording with focus groups after the initial prototype has been confirmed and refine it, if necessary, in accordance with consumer reactions and/or changing brand values.
Finally, consider using an application like Shazam to see if the sound resembles any songs or tunes that are already in the public domain.
Companies with popular jingles or melodies in TV, radio, entertainment, telephony, IT media, computer software and the media sector, in general, have also been keen to register their sound trade marks. Think of the Intel Inside bong, the MGM lion’s roar, 20th Century Fox, or Netflix’s signature ‘ta-dum’ that plays every time it starts.
They’ve all become unique identifier sounds that users identify with a brand. As such, they are successfully registered as trade marks (side note: surprisingly, Netflix does not own a trade mark registration for “Netflix and chill”).
Netflix’s sound was first used 6 years ago and registered in 2017. As a result, Netflix obtained the exclusive, nationwide monopoly over this sound (or a confusingly similar sound) in conjunction with the services listed in its trade mark application (or similar services).
Sounds are one of the ‘non-traditional’ trade mark formats, but they do exist. They may not be as common as other categories such as words, logos and slogans, but they do exist. They are an acoustic equivalent of a visual logo for a brand. They bring to mind the brand that they are representing, even without the visual accompaniment.
It’s not always just your logo, slogan or your company name that is capable of distinguishing your company. Sometimes a full audit of your intellectual property by experienced solicitors can unearth trade marks that you might not have realised that you had.
Briffa advises on contentious and non-contentious trade mark matters and assists its clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in the UK, Ireland and worldwide. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us using the form below.
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