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Wednesday, 24 October 2007

Me unregistrable, You Jane

The IPKat has come across a recent decision of the OHIM Fourth Board of Appeal, refusing registration of a sound mark represented as follows:

‘The mark consists of the yell of the fictional character TARZAN, the yell
consisting of five distinct phases, namely sustain, followed by ululation,
followed by sustain, but at a higher frequency, followed by ululation, followed

by sustain at the starting frequency, and being represented by the
representations set out below, the upper representation being a plot, over the
time of the yell, of the normalised envelope of the air pressure waveform and
the lower representation being a normalised spectrogram of the yell consisting
of a three-dimensional depiction of the frequency content (colours as shown)
versus the frequency (vertical axis) over the time of the yell (horizontal axis).’

and


The appeal and application was refused in a decision which would seem to suggest that sonograms aren't much use of representing sound marks, and that musical notation is the only option.

The Board made the following points:

* The Shieldmark case is perfectly clear. Other OHIM decisions which have sought to broaden it to sonagrams have make their comments obiter dictum. The coments in the Roar of a Lion decision were expressly dissented from.

* The wording in this case was not clear or self-contained

* The sonogram was not self-contained, clear or intelligible because it couldn't be read to produce precise sound

* It also wasn't accessible – it couldn't be retransformed by competitior into a sound. The verbal description didn't help because reader wouldn’t be able to rebut any other verbal image. While there may be specialist software available to transform a sonogram into an image, one can’t expect third party to install it on his computer. Besides, in quite forthrright terms, the Board held that it was not clear that software worked anyway.

* The representation was not self-contained if additional software was needed to read it.

* The fact that much of the public was familiar with the Tarzan yell didn't rectify the problem with graphic representation (though it could have been relevant to distinctiveness).

* The Board rebutted an attack on the accessibility of musical notation, holding that it equivalent to a language, and understood by a significant percentage of the public.

The IPKat says that if sonograms aren't sufficient for graphical representations, that leaves only musical notation, which would limit sound marks to snatches of music.

6 comments:

Anonymous said...

A logical conclusion (by both the BoA and IPKat) when the combined effects of the Shield and Sieckmann cases are considered.

The deeper policy question is whether the requirement for graphic representation is an anachronism these days. In other words are perfectly registrable TMs being denied protection because the law hasn't kept pace.

Anonymous said...

I'm mystified as to why the applicant in this case didn't just represent the sound using musical notation. Any reasons given?

Ululation would require some unusual notation, but it's not unheard of in music.

Gerontius

Ilanah said...

Non-musician's question here: would a piece of music that was meant for voice alone ordinarily be shown on a musical score?

Anonymous said...

I'll answer that question with a question: How would a singer read music if it were not written on a musical score?

Now, for this mark, the exact quality of the ululation may be difficult to show without using some interesting notation, but it would certainly be possible and the simplest way to do it.

Musical notation has the added advantage that it doesn't have to indicate what instrument is producing the notes whereas a fequency sonogram thing would indicate qualities of the instrument and not just the notes.

Gerontius

Anonymous said...

That can actually be a disadvantage in terms of deciding whether the mark has acquired distinctiveness. If you defined the mark purely by notation (a very broad claim in effect)and then in actual use it is very clear that the instrumentation is critical then a limitation may well be required. It's actually debateable whether that would be possible (see Polo case).

Hmm, time we dumped 'graphic rep' methinks.

Frédéric said...

"The IPKat says that if sonograms aren't sufficient for graphical representations, that leaves only musical notation, which would limit sound marks to snatches of music."

Not quite.

Indeed since July 2005 electronic CTM applications can include a sound file.

See the end of my post on this subject: http://tinyurl.com/2tzhgn

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