Sound trademark

A sound trademark is a non-conventional trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services.

In recent times sounds have been increasingly used as trademarks in the marketplace. However, it has traditionally been difficult to protect sounds as trademarks through registration, as a sound was not considered to be a 'trademark'. This issue was addressed by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights [TRIPs is an international treaty which sets down minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO.] , which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings" (article 15(1)).

Despite the recognition which must be accorded to sound trademarks in most countries, the "graphical representation" of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.

Registration of sound marks in different jurisdictions

Australia

Graphic representation

In Australia, sound trademarks are generally acceptable if they can be represented by musical notation. According to the Australian trademarks Office, an application for a sound trademark which cannot be graphically represented with musical notation must include the following requirements.

* a graphic representation of the mark (eg. "CLIP CLOP MOO");
* a clear and concise description of the trademark (examples are given below);
**"The trademark is a sound mark. It comprises the sound of dogs barking to the traditional tune "Greensleeves" as rendered in the audio tape accompanying the application."
**"The trademark consists of the sound of two steps taken by a cow on pavement, followed by the sound of a cow mooing (clip, clop, MOO) as rendered in the recording accompanying the application."
**"The trademark consists of the sound of a soprano voice singing wordlessly to the tune represented in the musical score attached to the application. The trademark is demonstrated in the recording accompanying the application form."
**"The trademark consists of a repeated rapid tapping sound made by a wooden stick tapping on a metal garbage can lid which gradually becomes louder over approximately 10 seconds duration. The sound is demonstrated in the recordings accompanying the application."
* a recording of the trademark which can be played back on media which is easily and commonly accessible.

Other requirements are set out in the "trademarks Office Manual of Practice and Procedure" issued by IP Australia. [ [http://xeno.ipaustralia.gov.au/D:/Exmanual/pt20_29/part21.htm#5] Dead link|date=July 2008]

European Union

In the European Union, Article 4 of "Council Regulation (EC) No. 40-94" of 20 December 1993 ("signs of which a Community trademark may consist") relevantly states that any CTM may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Shield mark B.V. v Joost Kist (case C-283/01) the EcJ basically repeats the criteria from Sieckmann v German Patent Office (case C-273/00) that graphical representation, preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. [ [http://www.copat.de/markenformen/jj010283_en.pdf Shield mark B.V. v Joost Kist (case C-283/01)] ] [ [http://www.copat.de/markenformen/C-273-00EN.pdf Sieckmann v German Patent Office (case C-273/00)] ]

This definition generally encompasses sound marks, and therefore an applicant for a CTM may use musical notation to graphically represent their trademark. A piece of music—a tune, or a ring tone on a telephone, can they be easily registered as a trademark (provided, of course, that it meets the Community trademark tests for registrability and distinctiveness). The difficulty presented by the approach in the EU is that while tunes are capable of registration, noises are not. The sound of a dog barking or the crash of surf cannot be recorded in musical notation and sonagrams will no longer be accepted by the trademark registries in the European Community.

United States

In the United States, the test for whether a sound can serve as a trademark "depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck".

This was the fairly strict test applied by the US Trademark Trial and Appeal Board in the case of General Electric Broadcasting Co., 199 USPQ 560, in relation to the timed toll of a ship's bell clock.

More famously, Harley-Davidson attempted to register as a trademark the distinctive "chug" of a Harley Davidson motorcycle engine. On 1 February, 1994, the company filed its application with the following description: "The mark consists of the exhaust sound of applicant's motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use". Nine of Harley Davidson's competitors filed oppositions against the application, arguing that cruiser-style motorcycles of various brands use the same crankpin V-twin engine which produces the same sound. After six years of litigation, with no end in sight, in early 2000 Harley Davidson withdrew their application.

Other companies have been more successful in registering their distinctive sounds: MGM and their lion's roar; the NBC chimes; famous basketball team the Harlem Globetrotters and their theme song "Sweet Georgia Brown"; Intel and the three-second chord sequence used with the Pentium processor; THX and its "Deep Note"; Federal Signal Corporation and the sound of their "Q2B" fire truck siren; AT&T and the spoken letters "AT&T" accompanied by music; and RKO with a combined moving image and sound mark depicting the RKO Pictures radio tower transmitting a Morse-code like signal.

External links

* [http://www.uspto.gov/go/kids/kidsound.html A listing of sound trademarks with audio files] at the United States Patent and Trademark Office website
* [http://www.copat.de/markenformen/mne_markenformen.htm The Non-Traditional Trade Mark Archives]
* [http://www.brainguide.us/ralf-sieckmann The 2008 version of Non-Traditional Trade Mark Archives under publications]
* [http://www.out-law.com/page-4110 Article on the registration of sound trademarks in the European Union]

Notes