MGM’s lion roar. Intel’s “intel inside” chime. Twentieth Century Fox’s fanfare. What do all these sounds have in common?
That’s right: they’re all protected sound marks, a trademark consisting exclusively of a sound or combination of sounds.
Once upon a time, trade marks were reserved for visual elements of a brand such as a logo that was stamped onto packaging. That world is gone – in its place, an advertising executive’s playground where the possibilities for brand-building transcend words and pictures.
Today’s brands aim to bring the consumer in to their world through images, sound, video, virtual reality and even blockchain technology. Through multimedia experiences, they seek to pull their target audience into an environment that reinforces what the brand stands for and what makes it unique.
The power of sound and video to build emotional connections is unquestionable; research has consistently proven that we are more likely to unconsciously absorb sound than we are to unconsciously take in information we read. If you regularly listen to the radio, it’s more than likely you’ll have had an annoying jingle stuck in your head for days on end.
Similarly, if you were to think of a price comparison website, you might think of a meerkat with a Russian accent saying, “simples”, or you might start singing the infuriating “Go Compare” song. The science driving these campaigns is simple: the more memorable a sound, the more likely it (and therefore, the brand) is to stick in your mind.
(Interestingly, the two price comparison companies did square off in a trademark dispute in 2014 when GoCompare opposed CompareTheMarket’s attempt to win exclusive rights to the phrase ‘compare the market’ (with spaces). It was the meerkats who emerged victorious when the Trade Marks Office ruled that three words, read together, had developed a ‘distinctive character’ that was synonymous with their brand, partly due to the success of the TV ad campaigns.)
The impact that an instantly recognisable sound can have in building a subconscious association with a brand is undeniable. After all, audio doesn’t require eyes-on attention; it can be lodged into the subconscious – as a result, you can learn about a brand without even knowing you’re learning a brand. In this multimedia advertising landscape, protecting and enforcing your intellectual property rights is critical in batting away attempts from competitors to piggyback on your success.
But securing a sound mark isn’t always the easiest.
It was first achieved by media giant NBC, in 1971. Their distinctive NBC chimes had been around for decades prior, originally containing 7 notes before being reduced to three notes in 1930. The long history the brand had of using this chime was a key factor in its successful registration. The same goes for ‘Deep Note’ – the audio trademark of the George Lucas-founded high fidelity sound company THX.
Since the EUTM Trade Mark Directive 2015 came into force, the EUIPO has allowed brands and individuals to register sound marks. However, securing a sound mark hasn’t always proven straightforward. Prior to an amendment to the regulations that came in 2017, a sound could only be registered as a trade mark if it could be represented graphically.
Representing a musical sound can be a simple case of transposing the music to a score – but what about more unusual sounds such as Godzilla’s roar or the noise made by lightsabers in Star Wars?
The Sieckmann criteria (ECJ decision in Sieckmann V. Deutsches Patent und Markenamt, C-273/00) states that graphic representation of a trade mark must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
This was a tricky concept to tackle: what is an adequate graphical representation of something that is not visually perceivable? How can a sound trademark satisfy this requirement, protect the trade mark holder’s rights and give third parties a clear guidance as to what is protected by the trade mark?
(In the case of the lightsaber, Lucasfilm managed to register a sound trademark with the USPTO by describing the noise as the “Sound of an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound”. Since the sound that a lightsaber makes when wielded is so iconic, the lightsaber toy manufacturers must take separate permissions for using the name and for the sounds.)
Fortunately, an amendment to the EUTM Regulation that came into force on 1 October 2017 removed the need for graphical representation. The current Regulation provides in Article 4 that any sign can be a registered trademark if it is able of “being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”
Since the need for graphical representation has been eliminated, brand owners can now take advantage of any technology that is able to provide a sufficient representation of the sign for which protection is sought. The sufficiency of the representation will still be assessed by the Sieckmann criteria; the difference is that it doesn’t have to be graphical. Sound signs can be represented with JPEG or MP3 files, while multimedia signs can be represented with MP4 files. After the elimination of ‘graphical representation’, from the EUTM Regulation, applications for non-traditional trademarks such as sound more than doubled.
The next hurdle in securing a trade mark for a sound is making sure the sound is sufficiently distinctive.
To be distinctive, the sound must not describe the goods or services for which registration is sought. Policy considerations will also factor in to whether or not a trade mark is accepted. For example, courts will understandably be hesitant to grant brand owners the exclusive rights to elements for branding that other businesses might reasonably wish to use.
For example, trying to register the noise of a toaster popping for a toaster product is unlikely to be accepted unless it is unique and unusual. An example of a successful registration in this area is Zippo, who registered a trade mark with the USPTO of the sound of their Zippo lighter opening and sparking – a sound that is distinctive from the standard lighter noise.
One of the determining factors in Zippo’s successful sound trade mark application is that the brand were able to provide substantial evidence in the form of social media posts, film clips and news articles that clearly indicated public recognition of the distinctive sound made by the lighter. Although this trade mark was registered in the US, the principle is shared by the UKIPO and EUIPO: theoretically, any mark can be registered if it is distinct enough.
How can I register a video mark?
The UK’s implementation of the Trade Mark Directive saw the removal of the requirement for graphical representation in Trade Mark filings. On a practical level, the UK IPO now deems a range of digital file formats as acceptable in representing a trade mark, including mp3, mp4 and jpeg files.
As such, non-traditional trademarks such as sound and motion are becoming more accessible, and on 3 May 2019, the UKIPO granted the first ever multimedia trademark: a one-second moving image that features Toshiba’s logo zooming out before polygons representing origami appear and disappear around it.
Effectively, a motion trade mark can be secured in the UK and EU, so long as the representation of the mark allows parties to determine the clear and precise subject that the trade mark protects and is compliant with the rest of the Sieckmann criteria. Trademark law now also enables the Intellectual Property Office to determine the technical specifications for electronically filed trademarks, which means specifications can be quickly adapted to align with potential advances in technology.
But that isn’t to say it won’t be a challenge. We strongly recommend consulting with a specialist trademark lawyer to determine whether or not your application for a trade mark is viable and the potential hurdles you may face in the process.
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