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Trade marking a sound in Europe

A sound can be registered as a trade mark if it is capable of being represented graphically in a clear and easily accessible way, the European Court of Justice ruled yesterday in a case that heard from Beethoven's 'Für Elise' and a Dutch-speaking cockerel.28 Nov 2003

Registrations for music notes on a music score may succeed – but an onomatopoeic description of a cockcrow will not, concluded the court.

The case concerned Dutch communications consultant Joost Kist, who used the soundtrack of Beethoven's Für Elise and the noise of a cockerel's crow in a 1995 advertising campaign.

Unfortunately for Kist, the first nine notes of Für Elise and the sound of a cockcrow had been registered three years earlier, by Dutch intellectual property consultancy Shield Mark BV, as sound marks with the Benelux Trade Marks Office.

The description of these marks varied. Some consisted of a musical stave with the first notes of Für Elise, others of the words "the first nine notes of Für Elise", and still others of the sequence of musical notes E, D#, E, D#, E, B, D, C, A.

Other marks consisted of the word "Kukelekuuuuu," more familiar to English-speaking farmyards as "cock-a-doodle-do."

With marks in hand, Shield Mark sued Kist for infringement and unfair competition.

When the case came before the Hoge Raad der Nederlanden – the Supreme Court of the Netherlands – the Court asked the European Court of Justice (ECJ) whether the Community Directive on trade marks allows sound signs to be registered at all.

Yesterday the ECJ delivered its verdict. The answer is Yes, sound signs can be registered, but only if certain conditions are fulfilled.

The relevant provision in the Trade Mark Directive states that:

"A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

This, said the Court, was not an exhaustive description, and therefore sound signs could be registered as trade marks so long as their use made it possible to distinguish the goods or services of one undertaking from those of other undertakings.

Furthermore, to be registered a sound sign must be capable of graphical representation – by means of figures, lines or characters that are "clear, precise, self-contained, easily accessible, intelligible, durable and objective."

According to the Court, those requirements are not satisfied by a graphical representation of the sound sign that simply says that the sign consists of the notes making up a well-known work, or that is a basic written sequence of musical notes.

Nor will an onomatopoeic graphical representation succeed, as it lacks clarity and precision, particularly in a European context where different languages will translate the onomatopoeia differently.

On the other hand, said the Court, the requirements are satisfied if the sound sign is represented graphically by a musical stave divided into bars and showing a clef, notes and other musical symbols.

This notation, as a whole, constitutes a faithful representation of the sequence of sounds that form the melody in respect of which registration is sought.

In the UK, sounds that are protected by registered trade marks include the jingle used by Direct Line Insurance, Bach's Air on a G String, trade marked by Hamlet Cigars, and Delibes' Flower Duet from Lakmé, trade marked by British Airways.

Classical works can be attractive to those seeking sound trade marks because the copyright in the music has expired - which avoids the need for negotiation with an artist.

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