Sound trademark
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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 trade marks 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 RightsTemplate:Ref, 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.
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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 Trade Marks 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 trade mark 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 trade mark 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 trade mark consists of the sound of a soprano voice singing wordlessly to the tune represented in the musical score attached to the application. The trade mark is demonstrated in the recording accompanying the application form.
- The trade mark 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 Trade Marks Office Manual of Practice and Procedure issued by IP Australia [1] (http://xeno.ipaustralia.gov.au/D:/Exmanual/pt20_29/part21.htm#5).
Registrability
European Union
In the European Union, Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993 ("signs of which a Community Trade Mark 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".
This definition generally encompasses sound marks, and therefore an applicant for a CTM may use musical notation to graphically represent their trade mark. A piece of music - a tune, or a ring tone on a telephone, can they be easily registered as a trade mark (provided, of course, that it meets the Community Trade Mark 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.
United States
In the United States, the question as to whether a sound can serve as a trade mark:
- 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 endeavoured to file as a registered trade mark the distinctive "chug" of a Harley Davidson motorcycle engine. On 1 February, 1994, the company filed an application for a sound trade mark: "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 had more success: MGM have registered their lion's roar, famous basketball team the Harlem Globetrotters have registered their theme song "Sweet Georgia Brown", Intel registered their three-second chord used with the Pentium processor, and AT&T has registered the spoken letters "AT&T" accompanied by music.
External links
Notes
- Template:Note 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.