A trademark is a distinctive sign registered with a trademark office that distinguishes the goods or services of a company from those of other companies. It can be a word, a logo, a shape, etc. But what about sounds?
A ringtone, a melody, a jingle, a sound of nature, etc. can be registered as a trademark as long as they meet the trademark criteria. As any other trademarks, sound trademarks are protected against any unauthorised use by third parties of an identical or similar sound to distinguish identical or goods or services (depending upon the cases, provided that there exists a risk of confusion)
These criteria were recently clarified by a decision of 7 July 2021 of the General Court of the European Union (EGC), the European first instance Court.
To date, more than 250 sound trademarks have been accepted for registration by the EUIPO, the European Union Intellectual Property Office, such as, for example:
🔹 EUTM 018026128 filed by Roche Diagnostics GmbH for, among other things, laboratory equipment for use in research and science : click here to listen;
🔹 EUTM 018029296 filed by Mastercard International Inc. for financial services and related software and computer services : click here to listen;
🔹 EUTM 018129075 filed by Lidl Stiftung & Co. KG for retail services : click here to listen.
Like any trademark, a sound trademark can only be registered if it meets some criteria, especially :
➡️ being represented by means of commonly available technology so that it can be reproduced in the trademark register in a clear, precise, distinct, easily accessible, intelligible, durable and objective manner, and
➡️ being capable of distinguishing the goods or services of an enterprise from those of its competitors, i.e. distinctive.
What you see is what you get
Each office may have its own requirements for the representation of a sound trademark. For instance, before the EUIPO, applications for sound marks must consist of an audio file reproducing the sound (mp3) or a reliable representation of the sound in musical notation (score). Other means of representation, such as onomatopoeia, musical notes alone and sonograms are not accepted. If these conditions are not met, the trademark application will be refused.
This requirement is essential to enable the competent authorities (offices and courts) and competitors to determine precisely the subject matter of the protection and thus the trademark scope of protection. This is all the more important since, once filed, the sign cannot be modified thereafter, except by filing a new application with a later date.
Stand out from the crowd
Even if it meets the representation requirement, a sound mark will be refused registration if it is considered by the Trademark Office as not being distinctive. In other words, if the office considers that it is not capable in itself of being identified as a mark by the public.
The question is then whether the average consumer will perceive the sound as being easily memorable and as a marker of the commercial origin of the goods or services in question.
The difficulty comes from the fact that if the public is used to instantly perceiving verbal signs or figurative signs as a trademark, it is much less so with regard to sounds.
EUIPO practice
In practice, the EUIPO considers that the following sounds are not suitable to constitute a valid sound mark:
🔹 very simple pieces of music consisting of only one or two notes, which will not be memorized by the consumer concerned because of this;
🔹 sounds that are part of common domain such as the letter to Elise;
🔹 sounds that are too long to be considered as an indication of origin (e.g. 39 seconds of music); or
🔹 sounds traditionally associated with specific goods and services or their characteristics or produced by such goods or services (e.g. motorcycle noise for land vehicles or machine noise for computer services).
Until recently, the EUIPO's practice was to transpose its jurisprudence on three-dimensional marks to sound marks and to consider that only a sound that significantly deviated from the norm or habits of the sector was likely to constitute a valid mark.
#2021 ECG rullings
EUIPO's practice was recently discussed before the ECG, which was seized for the first time of the validity of a sound mark (case. T-668/19 Press and Information Ardagh Metal Beverage Holdings v. EUIPO). The mark in question consisted of an audio file that recalled the sound that occurs when a can of beverage is opened, followed by a silence of about one second and a fizz of about nine seconds. The registration had been applied for various beverages as well as for metal transport and storage containers. The EUIPO rejected the trademark application on the grounds that the mark applied for was devoid of distinctive character. The applicant appealed to the ECG, which upheld the EUIPO's findings.
The ECG provides a number of interesting clarifications, namely :
➡️ the case law on three-dimensional trademarks is not transposable to sound trademarks;
the ECG therefore overturns the EUIPO's practice in this respect;
➡️ the criteria for assessing the distinctiveness of sound trademarks do not differ from those applicable to other categories of trademarks;
➡️ a sound sign must produce a sufficient impression to be perceived as a trademark and not as an element of a functional nature or an indicator without any intrinsic characteristic of its own: the consumer must be able, by the mere perception of the mark, without it being combined with other elements (verbal, figurative, etc.), to make a connection with the commercial origin of the goods or services in question;
➡️ to constitute a valid trademark, the sound combination must be unusual and not correspond to the predictable and usual elements on the market in question. This is not the case of the sound consisting of the opening of a can followed by a silence and a fizz.
These elements provide useful guidelines for applicants and practitioners who will remember that the criteria for registering a sound trademark are more difficult to meet than for "classic" trademarks.
It should be noted that while the registrability of a sign is primarily a case-by-case assessment by the relevant trademark office, it will be up to the applicant to convince the office (and, if applicable, the appeal bodies) that the sign will be perceived as an indication of commercial origin and therefore constitutes a valid trademark.
Written by Claire Leonelli and Claire Denoual, Avocats à la Cour – /c law