Graphical representation of sound trademarks – past, present and future

4/2015 5.11.2015
(Photo: Generalitat de Catalunya. Arxiu Nacional de Catalunya)
The requirement of graphical representation is a fundamental part of the trademark definition on both a national and European level. This requirement – i.e. the definition that a trademark “may consist of any signs capable of being represented graphically” – is, however, a tricky concept when it comes to sound trademarks and other non-conventional trademarks.

Before the harmonization of the Finnish Trademarks Act in 1993, sound trademarks could not gain trademark protection in Finland, because sounds in the form of notation were not accepted as “figures” and were therefore not included in the trademark definition at that time. Through the harmonization, the trademark definition was expanded to include marks that can “be represented graphically”, which enabled sound trademarks to be registered also on a national level. Even though the requirement essentially opened up the possibility for registration of sound trademarks and other non-conventional trademarks, it has also over time caused significant difficulties for the registration of these.

Even though sounds could now be registered as trademarks, it was still unclear what this would come to mean in practice. The requirement of graphical representation has since then raised many questions, as sounds have become an effective way to distinguish goods on the markets of today. What is an adequate graphical representation of something that due to its nature is not visually perceivable? How can a sound trademark satisfy this requirement in a way that protects the trademark holder’s exclusive rights but also gives third parties a possibility to determine what is protected by the registration? Is the current situation at all compatible with sound trademarks, and how will the upcoming European trademark reform change the situation?

Achieving clarity through case law

It was in its landmark case C-273/00 Sieckmann of 12 December 2002 that the Court of Justice of the European Union (CJEU) for the first time took a stance on the problems that arise when registering trademarks that cannot as such be perceived visually. In the case that concerned the registration of a scent trademark, the CJEU stated that the list of examples of trademarks in Article 2 of the Trade Marks Directive is not exhaustive, and that “a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically”.

The CJEU also established that the representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”, and these seven “Sieckmann criteria” have become a benchmark for the assessment of whether a graphical representation of a non-conventional trademark is adequate or not.

The assessment regarding sound trademarks was further clarified in the CJEU’s judgment C-283/01 Shield Mark of 27 November 2003. In the case, the CJEU assessed whether or not sounds may constitute trademarks and which conditions must be met for a sound trademark to be represented graphically in accordance with Article 2 of the Trade Marks Directive.

In addition to repeating principles set forth in the Sieckmann case, the CJEU held that none of the representations using written language in the case, including that the sound trademark was a certain famous musical piece, a certain sequence of musical notes, an animal sound or an onomatopoetic word, met the criteria set for the requirement of graphical representation. However, the Court held that the musical trademarks that had been represented in the form of a musical stave had met the requirement.

The Shield Mark case clarified the assessment when it came to musical sounds as trademarks, but gave no answer to how non-musical sounds could satisfy the requirement, since these cannot be represented through notation. The OHIM Boards of Appeal have however over the years through practice clarified the interpretation of the requirement regarding these types of marks. In its decision R 781/1999-4 (Roar of a lion), the Fourth Board of Appeal held that sonograms should be accepted as graphical representations, but it did however not accept the sonogram at hand due to the lack of time and frequency scales.

The interpretation of sonograms being an accepted form of graphical representation was further confirmed through the case R 295/2005-4 (HEXAL), in which a sonogram was accepted as an adequate graphical representation of a slogan in spoken language.

However, a year later in its decision R 708/2006-4 (Tarzan yell), the OHIM’s Fourth Board of Appeal went against earlier practice by refusing the registration of a sound mark that had been applied for through a detailed sonogram accompanied with a written description. In its decision, the Board stated that sonograms do not fulfill the criterion of being self-contained, since no one can read sonograms as such and this criterion requires that third parties viewing the registration should be able to reproduce the sound without additional technical means. Also, the Board held that sonograms as such are not clear, intelligible or easily accessible.

According to newly accepted practice at OHIM, applicants were allowed to submit sound files when filing electronic CTM applications, and as the Board stated that sound files are both easily accessible and self-contained, it was clear in the reasoning of the decision that the application had been rejected due to the lack of a sound file.

According to OHIM’s current guidelines for examination on community trademarks, a sonogram alone is not accepted as a graphical representation if a sound file does not accompany it. A sound file alone is not sufficient due to the requirement of graphical representation, but a sonogram combined with a sound file is the only way of representing non-musical sounds. In cases concerning musical sounds represented through notation, a sound file may be attached, but it is not mandatory. On a national level, the Finnish Patent and Registration Office requires applicants to attach sound files to applications for both musical and non-musical sound trademarks.

A much-criticized requirement

Even though the current practice seems relatively clear regarding this requirement, there is a certain unnatural dichotomy regarding the registration of sound trademarks – the written regulations require a graphical representation since this is and especially has been a fundamental part of the registration process, while practice shows that this graphical representation is not enough since it often needs a non-graphical addition to meet the requirements that have been set. The graphical representation does not in today’s light seem to meet the requirements it intends to, which has attracted a lot of criticism in legal literature.

The requirement has mostly been based on practical reasons, since it used to be considered that the authorities would have difficulties handling and examining marks registered in another form, but today this is a very outdated view in the light of developed technology and the ability to register marks through e-filing. The requirement has repeatedly been criticized for not being flexible enough to meet the requirements imposed by technological developments and the many non-conventional trademarks this has led to. Applicants of sound trademarks wish to protect the sounds as such, but trademark protection is still granted based on “how the sound looks”.

(Photo:iStock.com/yewkeo)

The fact that a sound file is still not required when filing an application for a musical sound trademark through notation has also received criticism. In literature, it has been held that this ultimately leads to a situation where the registrations of non-musical sounds are the ones that better satisfy the Sieckmann criteria of being clear and easily accessible, since the attached sound file enables this, while musical notation on the other hand is only easily accessible for those able to read this sort of notation and still does not give an exact representation of the actual registered sound. It has been presented that adopting a practice on EU-level where sound files would be required also when registering sound trademarks through musical notation (as is the practice in Finland) would improve legal certainty and the accessibility of registered trademarks.

In the reasoning of the Sieckmann case, the CJEU stated that the requirement of graphical representation serves to define the mark in order to determine the precise subject of the protection achieved through the representation. In today’s light, it can however be questioned if this objective really is met in the best way through graphical representation of sounds. Instead of facilitating the registration process, the requirement can actually hinder and obstruct the registration process for many of the involved parties. The fact that sound files are largely required undermines the requirement, and the existence of well-functioning registration systems based on the applicants attaching sound files has increasingly emphasized the need to adapt the requirement to today’s practice.

Towards a more well-functioning system

The ongoing EU trademark reform that was initiated by the European Commission back in 2009 is drawing to a close, and the reform will make significant changes to the current regulation both when it comes to the requirement of graphical representation and to what constitutes a trademark. Proposals for revision of the Trade Mark Directive and the Community Trade Mark Regulation were launched in March 2013, and a political agreement on the proposed amendments was reached in spring 2015. According to the current schedule, adoption by The Council and the European Parliament will take place in mid-November to mid-December, after which the texts will be published around the year-end. The removal of the requirement of graphical representation is one of the major amendments made to the Community Trade Mark Regulation and the Trade Mark Directive.

One proposed amendment is that sounds and other non-conventional trademarks will be included in the list of examples of trademarks. The requirement of graphical representation will be replaced by that the signs must be capable of “being represented 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”. The removal of the requirement of graphical representation and replacement of it with a more open definition that allows representation by technological means will lead to more flexibility and enhance legal certainty for non-conventional trademarks and especially non-musical sound trademarks.

The revision of Chapter 1 of the national Trademarks Act is underway, and the Government Bill proposing the most critical changes to modernize the law and make it correspond with current EU practice and regulation will be presented before the parliament at the end of the year. In light of the steps being taken on EU-level during this fall, it seems as though both long awaited and well-needed further changes to the law are already looming in the horizon.

Helena Gunst

Bachelor of Laws
University of Helsinki

The author worked as a trainee at IPR University Center in summer 2015 and this article is based on her Bachelor’s thesis.

Aiheet: Tavaramerkit
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