Using sound trademarks as a successful marketing tool
Nowadays, the evolving technology created the urge for many businesses to find alternative and sophisticated ways to uniquely identify their commercial products or services.
Also, with the increasing diversity of business ventures, Trademarks which have been traditionally comprised of words and/or logos that relate to visual representations, have given way to a plethora of other marks that are distinguishable by senses other than sight. It appears indeed that consumers are able to identify a particular product or service by reference to a particular jingle, melody or music without support through speech.
The use of Sound Trademarks as a unique identifier for the commercial origin of a product or services has not been a marketing tool for business for very long time. In fact, there is no international consensus on whether a sound is protectable as a Trademark. Under most conventions and national statutory Laws, the definition of a Trademark either encompasses sound as a Trademark, or at the very least, does not exclude such marks.
Recently, whether sound marks are protectable has become the focus of much debate in a number of countries. However, only very few countries have developed the standards and/or requirements for obtaining registration of Sound Trademarks. Examples of Sound Marks would be of four-note bell sound of Britannia Industries, default ring-tone of a Nokia mobile phone, sound of the lion's roar at the beginning of an MGM-produced film Corporation, Yahoo’s yodel, thunderous sound of Harley-Davidson etc. Indeed, in several countries, recent Trademark amendments expressly include sound in the definition of a Trademark. These include the United Kingdom, Germany, Italy, New Zealand and Australia.
In general, Trademark is actually a sign and/or symbol which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of other undertakings. However, the general public does not necessarily perceive sound marks in the same way as other categories of signs and this may make it more difficult to establish that they are distinctive. Evidence of factual distinctiveness, supported by trade evidence, will be required to register a sound mark to show that the public recognizes and associates the sound as a Trademark which indicates the goods/services offered by the applicant, and to demonstrate that the sound mark sought to be registered indeed functions as a Trademark. In order a sign to be registrable as a Trademark, the graphic representation must meet the Sieckmann criteria: clear, precise, self-contained, easily accessible, intelligible, durable and objective.
There are a number of different techniques that applicants may use to represent their marks graphically such as with words, images (line drawings or photographs), figurative marks e.t.c. In view of the latter, there is a requirement for sound marks in order to be registrable to be adequately represented in a graphic form such as by musical notation or a sonogram or any other distinct method such as a sound recording and in some cases, must be supported by some evidence to demonstrate distinctiveness.
There are various problems and issues that are associated with Sound Trademarks, such as the manner in which the mark needs to be used in association with goods or services and in particular the principles of “connection” and “affixation”, articulation of the mark for registration, distinctiveness including functionality and consistency in use and assessment of confusion. Many people believe that the foregoing problems are not insurmountable, and except for articulation, are not unique and can be addressed by using traditional Trademark principles.
The case of Shield Mark B.V. vs. Joost Kist which is a decision by the European Court of Justice, case C-283/01, dealt with the question whether sound signs may be registered as Trademarks, explained the requirements those sound signs and their Trademark entry that have to fulfil to be consistent with Article 2 of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC).
The aforesaid case concerned two marks: the first nine notes of the melody for Beethoven’s “Fur Elise” and the crowing of a cock, both for advice and services in the field of intellectual property and marketing. The applicant had used musical notation (including the instructions to be played on the piano), onomatopoeic representation (kukelekuuuu) as well as a verbal description “the crowing of a cock”. The Court had to determine whether such marks were registrable as Trademarks and, if so, whether the requirements of graphic representation of a sound was met by: a note bar, a description in words, a voice picture or sonogram, a sound carrier, a digital recording that can be listened to via the internet or a combination of these. The Court stated that a score which comprised a stave with a clef, musical notes and rests whose form indicates relative values and where necessary accidentals would satisfy the seven Sieckmann requirements. This was so even though not everyone can read music: the requirement is “intelligibility” not “immediate intelligibility”. In contrast, the mere verbal description of sounds lacked clarity and precision. The Court held that onomatopoeic representation was problematic for two reasons: first because there is a lack of consistency between the onomatopoeia itself and the sound; second because perceptions of onomatopoeia are individual or at least culturally determined. For example in English such a sound would be represented as “cock-a-doodle-doo”. Consequently “a simple onomatopoeia cannot without more constitute a graphical representation of the sound or noise of which it purports to be a phonetic description.
Although the Court declined to comment on whether a digital recording or a sonogram would suffice, the Board of Appeal of the OHIM has indicated that sound spectrograms or sonograms which depict pitch, progression over time and volume may constitute an appropriate way of representing sounds such as the “roar of a lion”. The Board thought that the fact that a person needs a certain amount of training before they could read a sonogram was no impediment, observing that the same is true of musical notation. However, a later Board of Appeal at OHIM has expressly taken a contradictory position, holding that a sound spectrogram of Tarzan’s yell was not sufficient graphic representation.
It is argued that in order to be eligible to register a sound mark, one has to be one of the strongest presences in the market before claiming that the said sound distinguishes their business and has subliminally implanted itself in the mind of the listener. A famous failed attempt at a sound Trademark application was Harley-Davidson’s attempt to register the distinctive “chug” of their motorcycle engines. Harley- Davidson, a company that manufactures heavy weight motorcycles meant for highway cruising, famously withdrew its application to register the sound of its V-Twin engines after six years of litigation. They have claimed that the said motorcycles are known for their distinctive design and exhaust note. They are well known for their customization of their bikes as well. In 1991, Harley-Davidson began participating in the Sound Quality Working Group. Later in the year, Harley-Davidson participated in some sound quality studies for Orfield Labs. Their objective was the lower the sound level for EU standards while analytically capturing the “Harley sound.” Then on February 1, 1994, the company filed a Sound Trademark application for the distinct sound a Harley-Davidson motorcycle engine makes. Nine of Harley-Davidson competitors filed comments opposing the application. Their argument was that some of their engines used similar engines that sounded like the Harley. Eventually, Harley-Davidson cancelled their application and effort to federally trademark their engine sound since they could not make the argument that the thumping of a revving Harley was distinct enough to warrant a mark.
Interestingly, when a sound is created and used in the marketing of a business, it is technically copyrighted once a tangible version is made. Therefore, the said business may register a copyright, instead of running the labyrinth of the United States Patent and Trademark Office (USPTO) and other Trademark Offices around the world (where applicable). Unlike a Trademark which stays active as long as it is renewed and used, a copyright expires 60 years after its creator's death. But if a business is growing with such speed and ferocity that the 60-year post-death limitation might be harmful, a sound mark can probably be filed for it before it lapses into public domain. In the meantime, a registered copyright will allow a business to enforce its ownership of the sound if someone else attempts to use it.
Although Sound Trademarks are underestimated as a marketing instrument, they have an interesting development in the marketing field. Their value of brand recognition makes them an effective enhancement to conventional marketing strategies. In fact, Sound Trademarks create emotional associations to a specific product when the target customers hear a particular melody or tune. However, unless the sound has pierced into the subliminal mind of the consumer, the registration of the Sound Trademark would be unsuccessful. As mentioned above, an applicant may copyright his sound mark as a last resort in the event where there is a high risk that his application for Trademark registration would be withdrawn. It is important to emphasize though, the need for more countries to truly recognize the value such a mark has, in terms of consumer recognition and brand association. In this age where the modes of marketing and advertising have diversified, granting recognition to different marks is indeed a positive sign for industries and their brands.
Article by Pinelopi Pilatsi, LLB, LLM
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