In the previous article, we saw that the abolition of the graphic representation requirement in 2017 has enabled companies to protect new types of “non-traditional” trademarks in the European Union, such as position marks, multimedia marks, etc.
This removal has also enabled “non-traditional” trademarks that could already be protected before this date to be protected more effectively using appropriate technical means.
This is the case with sound marks.
Sound trademarks could already be registered provided that the sounds were represented on a musical staff made up of notes. Only musical phrases or melodies could therefore be protected, but not sounds involving noises, which could not be transcribed using a staff.
Companies now have the opportunity to protect a wide range of sounds (jingles, sounds of nature, melodies with or without words, etc.), which can constitute strong commercial identifiers and therefore valuable intangible assets, in the same way as so-called “classic” trademarks.
Definition & representation methods
A sound mark is a mark consisting exclusively of a sound or a combination of sounds.
It must be represented by means of an audio file reproducing the sound or a precise representation of the sound within musical notation (staff).
The audio file must be in MP3 format and no larger than two megabytes.
Musical notations can be submitted as a JPEG file or on an A4 sheet of paper.
The musical notation must be as precise as possible, which means that it must include all the elements necessary to determine the desired object of protection. The tempo or speed of the melody and the instrument(s) are optional elements that may be indicated.
The Court of Justice[1] points out that the representation of a sound in musical notation must be reliable, clear, precise, complete in itself, easily accessible, intelligible, durable and objective, which implies the following:
“a staff divided into bars and containing, among other things, a clef (G, F or C), musical notes and rests, the form of which (for notes: round, half, quarter, eighth, sixteenth, etc.; for rests: pause, half-pause, sigh, half-sigh, etc.) indicates their relative value and, where appropriate, accidentals (sharp, flat, barre, etc.).) indicates the relative value and, where appropriate, the accidentals (sharp, flat, natural) – all these notations together determining the pitch and duration of the sounds – can provide a faithful representation of the succession of sounds that make up the melody being recorded. This method of graphically representing the sounds meets the requirements arising from the case law of the Court, according to which this representation must be clear, precise, complete in itself, easily accessible, intelligible, durable and objective“.
Distinctiveness
Sound marks are subject to the same conditions of validity and the same criteria for assessing distinctiveness[2] as other categories of marks.
A sound trademark application must therefore be distinctive and non-descriptive in relation to the goods and/or services applied for, in order to constitute a valid trademark.
The sound chosen must be intrinsically distinctive, i.e. it must be both easily memorable and capable of indicating that the products and/or services requested come from a single company.
To achieve this, the sound must have “a certain impact[3] ” that will enable the target audience to perceive it and consider it as a brand.
Such prominence is lacking if the sound is perceived as a functional element of the designated goods and/or services or as an element with no intrinsic characteristic of its own.
Although the criteria for assessing distinctiveness are the same for the different categories of trademarks, public perception will not necessarily be the same for all categories, particularly sound trademarks.
Sound trademarks cannot be affixed to products and will not necessarily be presented when services are offered. By their very nature, they are more likely to be encountered by the public as part of promotional activities carried out by companies, particularly on television or radio.
Consumers will be more inclined to regard a trademark as an indication of commercial origin if no link can be established between the sound perceived in the trademark and the goods and/or services, or their characteristics.
For the purposes of assessing the distinctive character of a sound mark, the EUIPO[4] proposes the following classification:
- Sounds produced by or related to goods and/or services. They often correspond to the nature or function of the goods, or are closely related to the services, so that their distinctiveness will generally be considered low.
- Notes, combinations of notes, tunes or melodies. These sounds are unlikely to have any connection with the products and/or services. Nevertheless, their distinctiveness will depend on the specific characteristics of the sound elements registered.
- Sounds equivalent to verbal elements. Their distinctiveness will depend essentially on that of the verbal elements concerned.
- Sounds unrelated to the products and/or services. Logically, they have a distinctive character. However, they still need to have a certain “resonance” to be perceived as an indication of commercial origin.
The following sounds should, therefore, not be accepted:
- Very simple melodies composed of one or two notes;
- Public domain sounds ;
- Sounds that are too long ;
- Sounds usually associated with certain products and/or services.
By way of example, the EUIPO ruled that the sound of kisses[5] used to designate games in class 41 constituted no more than a very simple sound sequence aimed at repeating a banal tune, which did not make it possible to identify the commercial origin of the said services.
http://euipo.europa.eu/trademark/sound/EM500000018190039
The Office also considered that the sound of an electric motor accelerating[6] to designate various audible warning devices in Classes 09 and 12, although composed of three different musical segments, was not memorable and did not have any impacting characteristics enabling consumers to perceive it as a memorable, distinctive, impacting and imaginative sign. The sound was also considered too long.
http://euipo.europa.eu/trademark/sound/EM500000018825563
In this other case, the EUIPO found that the[7] melody was not only too long, but that it would not resonate with consumers, who would therefore be unable to attribute any meaning to it.
http://euipo.europa.eu/trademark/sound/EM500000018808525
However, sound trade mark registrations are regularly accepted by the EUIPO, for example, a long melody including lyrics[8] to designate various goods and services in classes 15, 16, 18, 21, 25, 35 and 41:
https://euipo.europa.eu/trademark/sound/EM500000018817652
or a jingle[9] from the Fédération Internationale de Football Association (FIFA) filed at the end of 2023 and registered by the EUIPO at the end of January 2024:
http://euipo.europa.eu/trademark/sound/EM500000018887647
Assessment of the likelihood of confusion between sound marks and between sound marks and other types of marks
As sound trademarks are still relatively rarely registered, few decisions on the defense of these specific titles currently provide practical and concrete criteria for comparing sound trademarks with each other or with other types of trademarks (word or multimedia).
However, in its Common Practices[10], the EUIPO sets out different scenarios.
Firstly, visual comparison is not applicable to sound marks, which consist exclusively of a sound or a combination of sounds.
Unsurprisingly, phonetic comparison is the decisive factor.
On this point, the following assumptions can be made:
- When a sound mark contains a distinctive verbal element (pronunciation), its presence will generally have a significant influence since consumers generally designate goods and/or services by their name;
- The identity or similarity of a distinctive verbal element will a priori have a greater impact on the result of the phonetic comparison of trademarks;
- A similarity between two sound marks will be possible even if the verbal elements are different if the signs coincide in another distinctive aspect, such as their melody;
- A different instrument, tempo or rhythm does not prevent two marks from being similar if the melody itself, i.e. a rhythmic succession of tones, is identical or likely to be perceived as identical;
- A similarity between a sound mark including verbal elements and other types of marks including verbal elements (e.g. a word mark) may be recognised where there is identity or similarity between these distinctive verbal elements. While the auditory perception of the sound mark will be determined solely by the sound produced, it will be determined according to the pronunciation rules of the relevant public with regard to the verbal element of the other mark.
Finally, the conceptual comparison between two sound marks, or between sound marks and other types of marks, can be carried out if a concept emerges and can be identified by the consumer. If the sound mark contains verbal elements, their meaning can be used to identify a concept.
Conclusion
Only around thirty European Union sound marks were registered in 2023, compared with more than seventy-five thousand word marks.
As a result, relatively few sound trademarks are registered compared to “classic” trademarks.
However, their protection should not be forgotten when putting in place global strategies to protect companies in terms of Intellectual Property, as they can constitute strong commercial and marketing identifiers in the same way as other types of brand.
For information and advice on “non-traditional” and “traditional” brands, contact us at trademarks@gevers.eu. The GEVERS website can be accessed at www.gevers.eu.
[1] CJEU, 27/11/2003, C-283/01, Musical scope, EU:C:2003:641, § 55
[2] TUE, 13/09/2016, T-408/15, Son d’un jingle sonore Plim Plim, EU:T:2016:468, § 41
[3] TUE, 07/07/2024, T-668/19, Combination of sounds on opening a can of soft drink, EU:T:2021:420
[4] EUIPO Guidelines on Trade Marks and Designs 2023
[5] EUIPO Refusal of 25/05/2020 -No. 018190039 – Beach Hut Games Limited
[6] EUIPO Refusal of 01/09/2023 -No. 018825563 – Automobili Lamborghini S.p.A.
[7] EUIPO Refusal of 06/07/2023 -No. 018808525 – Claudiu – Virgil ȚĂRAN
[8] EUIPO Registration of 21/7/2023- No. 018817652 – TONIUTTI ASSOCIES
[9] EUIPO Registration of 20/01/2024-No. 018887647 – Fédération Internationale de Football Association (FIFA)
[10] EUIPO “Common Communication on New Types of Marks” – CP 11 – April 2021
