Intellectual property: Making your mark with a sound

Netflix (“ta-dum” noise that plays at the start of the service), PlayStation (“zing” when switched on), and MGM (the roaring lion) are all companies that have a clear and distinct sound at the centre of their branding. Sounds can be a powerful marketing tool, and it is important that they can be protected for marketing purposes, but how easy is it really to benefit from protection?

A sound can be afforded trade mark protection if it meets the necessary requirements; recent case law, however, suggests that this is an uphill battle, with many sound mark applications being rejected for a lack of distinctiveness. This article considers the law in this area and some of the recent decisions.

Trademarking a sound

A sound can be protected as a trade mark if it has the characteristics of a trademarkable sign, so the sound must be distinctive in nature and be capable of distinguishing a product or brand from a competitor. The requirements for registering a trade mark have been clarified by EUIPO and the General Council (these reforms apply to the UK post-Brexit). Typically, a trade mark needs to be represented graphically in order to be registered; however this was recently disregarded in relation to “sound marks” and replaced with a test of clarity and precision. This allows applicants to upload digital sound files to the relevant register. Musical notations can also be uploaded, but applicants cannot upload both files and must choose their preferred form of representation.

A sound mark must demonstrate distinctive character, this being whether “an average consumer” will perceive the sound as a memorable one that serves to indicate that the goods or services are exclusively associated with one undertaking. Specifically, it must be non-functional in nature (i.e. not essential to the operation of the product), non-descriptive, and not deceptively misdescriptive.

Sound marks that are unlikely to be afforded trade mark protection without evidence of additional factual distinctiveness include:

• very simple pieces (consisting of one or two notes);
• sounds that are in the common domain (as seen in the “Johnny Johnny Yes Papa” case and examined more fully in the “Für Elise” case);
• sounds that are too long to be considered an indication of origin; and sounds typically associated to specific goods and services (e.g. doorbell).

Key connections

Two key issues which regularly cause a sound mark application to be rejected are lack of distinctiveness and the inability to indicate a commercial origin from simply hearing the sound. This is exemplified in a number of recent applications to EUIPO, including by Berliner Verkehrsbetriebe (“BVG”) and Porsche.

BVG, the operator of the Berlin public transport system, wished to trademark a two second bell-like jingle with EUIPO under class 39, which covers transportation and passenger transport. The examiner rejected the application due to a lack of distinctiveness, stating that consumers, would struggle to infer the commercial origins of a simple sound mark, in comparison to words and figurative signs. Overall, the sound, according to the examiner, was too short, not sufficiently memorable, and monotonous. BVG contested EUIPO’s position, stating their sound was sufficiently complex (containing multiple noises and pitches), and an artificial bell was used which was not present in any other transportation companies’ jingles. Defending its reasoning, EUIPO said jingles are common in the transport sector, and the more sounds used in the relevant sector, the more an application must stand out and differentiate itself.

In a similar decision, Porsche had its sound mark application (an electronically generated accelerating engine noise) rejected on the basis it lacked distinctiveness and complexity and was too short, therefore consumers would not be able to perceive Porsche as the commercial origin. Porsche gave examples of other recognisable short sounds from 80s/90s film and television, such as the lightsabre sound from Star Wars which is known globally and is successfully trademarked. EUIPO explained that Porsche’s sound mimics the sound of a real combustion engine and does not contain any unique or memorable elements to associate it to a specific origin or distinguish it from similar goods offered by competitors. Therefore, it lacks the ability to indicate a commercial origin. In terms of Porsche’s other examples, the EUIPO explained that these sounds were recognisable in a different context and time with limited consumer choice, which is no longer relevant in today’s world.

Conclusion

These judgments clearly depict the difficulties entities are having with registering sounds as trade marks. While sound marks should not be assessed more strictly than traditional trade marks, practically speaking it is harder for distinctiveness and commercial origin to be established. However, EUIPO did suggest that Porsche’s sound mark could serve commercial origin in the future if consumers are informed of it through extensive market use. This seems to suggest that Porsche may simply have made the application too early, and provides a glimmer of hope for future sound mark applicants. Furthermore, with both BVG and Porsche appealing their EUIPO decisions, the door remains open for EUIPO’s current approach to be re-evaluated.

The UKIPO appears to be more forgiving in its approach to sound mark application requirements, allowing the simple jingle of Hisamitsu Pharmaceutical’s sound mark to be registered in 2019 – though it is worth noting that this mark is represented on the register as sheet music rather than an audio, so it may have been simpler to evidence its distinctiveness.