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Non-traditional trade marks: Sound

Article by Therése Davis (Senior Associate) Adams & Adams

A sound mark is one of the non-traditional trade marks.  Non-traditional presupposes the existence of traditional trade marks and it is therefore necessary that we consider both non-traditional and traditional trade marks.

Traditional trade marks are everywhere around us and essentially comprise words, images, symbols, shapes and a combination of the above. It is the traditional writing on a packet of biscuits, or your favourite cold drink, or your new laptop.

A non-traditional trade mark is a less obvious way in which to communicate to the consumer what the source of the goods or services are.  The common denominator between traditional and non-traditional trade marks is, however, that both are used to function as trade marks and the function of a trade mark is to distinguish the goods or services from the same kind of goods or services emanating from another source. 

A less obvious way in which to communicate the source of the goods or services include, amongst others,  smell, shape, texture, taste, gesture and holograms.  The communication is less obvious because consumers may become aware of these non-traditional trade marks, but not necessarily realise that it functions as a trade mark (an indicator of source).

To function as a trade mark (albeit non-traditional) and to be registrable as a trade mark, the mark must be capable of distinguishing the goods and services of one proprietor from the same or similar goods and services emanating from a competitor.

To be able to distinguish it must be possible to identify the mark with certainty.  It is, therefore, necessary that the mark must be capable of being represented graphically.

The standards graphic representation of a mark have to meet are the so-called Sieckmann criteria. (Sieckmann v. Deutches Patent und Markenamt  [2002] E.C.R. I-11737 being the leading case in which it was held what the criteria for graphical representation of a non-traditional trade mark are), namely, ‘Graphic representation of non-traditional marks may be achieved by lines, images and characters that are represented in a clear, precise, self-contained manner, are easily accessible, intelligible, durable, objective and unequivocal.’

Sound can loosely be defined as mechanical vibrations.  A sound mark can be anything auditory, such as the roar of a lion, spoken word, a complex orchestral performance, a simply melody, or any combination of these.

Who does not recognise that famous roar of the MGM lion or the NOKIA tune? Graphic representation of sound marks is particularly difficult in that sound marks cannot be perceived visually.

It is suggested that an application for registration of a sound mark include the following:

  1. A written description of the sound
  2. A graphic representation of the sound in one or other form, and
  3. An audible representation of the mark.

The roar of the lion can be represented graphically in the form of a spectrogram (an image used to identify the spectrum of frequencies in a sound, i.e. phonetic sound). In addition, a verbal description of the sound and an audible recording are required to identify the sound in order to comply with the Sieckmann criteria. Mere onomatopoeia, such as COCK-A-DOODLE-DOO to describe a cock’s crow, would not meet the required standards.

The NOKIA TUNE is an example of a sound mark. The mark comprises a few bars in the middle of Francisco Tárrega’s Grand Valse, a romantic composition written for guitar. Francisco Tárrega was born in Spain in 1852 and he died in 1909.

To meet the Dieckmann criteria, proper description of the sound mark would involve the following:

  1. A written description: Francisco Tárrega Grand Valse
  2. Graphic representation: Music stave of the melody, and
  3. An audible representation: A sound recording of the tune.

Sound is no doubt a powerful medium through which to communicate. Local trade mark legislation specifically provides that a mark which is capable of being audibly reproduced shall be construed as use of a mark.

Brought to you by the National Small Business Chamber (NSBC).