Every type of trademark is a communication mark, but none more so than sound marks. These enable consumers to aurally distinguish between different products and services, whether they are represented by a classical melody, the quack of a duck or the yell of a fictional character, such as Tarzan. But how do you know if the sound you would like to associate with your product is registrable as a trademark? Gordon Wright continues our series on less conventional IP with a look at registering and protecting sounds.

The tune of greensleeves, played on bells or xylophone, is a familiar sound in British streets in the summer months, as ice cream vans tempt customers out of their houses and gardens to buy their wares. The music is always likely to be associated with ice cream - but can such a sound be a trademark? Provided that the sound is capable of distinguishing one trader’s goods or services from another, the answer, in Europe at least, is yes. However, the key issue as far as acquiring trademark rights is concerned, is how that mark should be represented graphically.

For music, the situation is relatively straightforward. The European Court of Justice (ECJ) has held that a mere sequence of notes, such as E, D#, E, D#, E, B, D, C, A, does not meet the requirements for graphical representation in the Community Trade Mark (CTM) Directive. Such a description does not make it possible, in particular, to determine the pitch and the duration of the sounds for which registration is sought, and which constitute essential parameters for the purposes of knowing the melody and, accordingly, of defining the trademark itself.

On the other hand, a stave divided into bars and showing, in particular, a clef, musical notes and rests, may be considered a faithful representation of the sequence of sounds forming the melody, as far as the ECJ is concerned. It has shown itself unconcerned that such a representation is not an ‘acoustic’ registration. For the ECJ, the importance is placed on the melody’s distinctiveness, and as long as the melody is registered in an appropriate musical format – as outlined above – registration should be possible as a result.

Non-classical sounds
But what about a less conventional musical sound, such as the call of an animal or a bird? If such a sound became distinctive of a trader’s goods or services, how could it be represented graphically in an application for a trademark? Could it be an onomatopoeic description in words? A description in some other way? Or could science be brought in, by representing the sound as a sound wave or sonogram? Would it be possible to annex a sound recording to the application? What about a digital recording for use on the Internet?

The difficulties of registering such sounds was well illustrated by various failed attempts to register a cockcrow as a trademark for one computer software company. Each time a disc containing the trader’s software was launched, a cockcrow was heard, but the manufacturer struggled to register this sound in the European Courts. When asked to rule on this matter, the ECJ decided that a verbal description such as ‘a cockcrow’ lacked the precision and clarity needed, and therefore made it impossible to determine the scope of protection sought. Onomatopoeia was rejected on similar grounds – it is not possible for the competent authorities and the public in particular traders, to determine whether the protected sign is the onomatopoeia itself, as pronounced, or the actual sound or noise. And the onomatopoeia may be perceived differently, depending on the individual, or from one member state to another. For example, in English a cockcrow is represented as ‘cock-a-doodle-do’, whereas in French it written, and spoken, as ‘cocorico’. Consequently, a simple onomatopoeia cannot without more information constitute a graphical representation of the sound.

A promising approach to the representation of non-musical sounds is the sonogram, which is a plot of the pitch (frequency), relative volume (frequency content) and progression over time of the sound occurrences. In effect, it is a representation of a sound in the way that musical notation is the representation of music. Just as with musical notation, with a certain amount of training and practice, sonograms can be read in such as way as to be able to conceive the noise or sound depicted. Although OHIM rejected an early attempt to register a sonogram of the MGM ‘roaring lion’, this was because the time and frequency scales were omitted – this would be comparable to musical notation which has no lines, keys, or designation of notes, for example, crotchets or semibreves.