A SOUND DECISION FROM THE ECJ

In Shield Mark v Kist, the ECJ has decided the conditions under which sound trade marks can be registered. Shield Mark obtained Benelux registrations in various forms for the melody of the first nine notes of Beethoven's Fur Elise and the sound of a cockerel's crow. When it brought trade mark infringement and unfair competition claims against Mr Kist, the court found that there was no infringement. Since the Benelux Governments intended to refuse to register sounds as trade marks , they had been invalidly registered. Shield Mark appealed to the Hoge Raad. In response to the Hoge Raad's reference, the ECJ provided the following guidance on the registrability of sounds as trade marks:

♦ On the issue of whether sound marks can be trade marks - Sound marks are capable of being trade marks under Article 2 of Directive 89/104 if they are capable of distinguishing the goods or serviced from one undertaking from those of other undertakings and if they are being capable of being represented graphically. They are not by their nature incapable of distinguishing between the goods of different undertakings and because they are precluded from registration under Article 2 Member States cannot preclude them from registration as a matter of principle.

♦ On the issue of whether sound marks can be represented graphically - following its Sieckmann, the ECJ reiterated that a trade mark can consist of a sign that is not capable of being perceived visually (such as a sound or an olfactory mark), as long as it can be represented graphically, particularly by means of images, lines or characters and if its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Furthermore, in order to obtain registration of a sound, an applicant must state in his application that he is applying for a sound mark.

♦ Whether certain ways of representing sounds are acceptable for trade mark purposes - While it was for national courts to determine whether the marks submitted in each case met these criteria, the ECJ was prepared to offer guidance on whether representation by musical notes or written language was sufficient. A description using written language could not be said to be insufficient a priori. However, Shield Mark's claim for the first nine notes of Fur Elise and a cockcrow was not sufficiently precise or clear, making it impossible to determine the scope of protection sought. This therefore did not meet the graphical representation element of Article 2. An onomatopoeia is also insufficient because there is a disparity between the onomatopoeia and the noise it purports to represent. Furthermore, an onomatopoeia can be perceived differently in different Member States - something more is needed to make onomatopoeia registrable. Music notes in the form A, C, E etc are also unacceptable since they are not clear, precise or self-contained as it is impossible to determine from such a representation alone the pitch and duration of the sounds forming the melody claimed. However, a stave divided into bars showing a clef, musical notes and rests forms a faithful representation of the sequence of sounds forming the claimed melody and as such meets the graphic representation requirements. Although a stave is not immediately intelligible, it may be easily intelligible, allowing the competent authorise and the public (including other traders) to know precisely the sign whose registration is sought. The ECJ refused to provide guidance on whether a sonogram, a sound recording, a digital recording or a combination of those methods were sufficient since these were hypothetical questions that the referring Netherlands court did not need to reach its judgment because Shield Mark had not applied for registrations in those forms.

The IPKat isn't surprised by the ECJ's conclusion after the court's judgment in Sieckmann. He observes though that the door has clearly been left open to the registration non-visual signs, the representations of which will require some interpretation before they can be understood. However, of all the non-visual signs, sounds are unique in having a method of notation that allows people to know exactly what the sign will be like merely by looking at the visual representation of them. He also notes that it seems that only sounds in the form of a musical melody will succeed and so he's withdrawing his application for the cat's miaow for intellectual property information services.

Fur Elise here and here
Cockerels here, here, here, here and here