At first glance, it might seem that a "trademark" can only be a graphic or visual designation, such as a company name or logo. However, we often fail to realize that we are surrounded by sounds that have been registered and are protected as trademarks. A good example is the distinctive lion's roar in Metro Goldwyn Mayer films, or even sounds such as the famous breathing of Darth Vader from Star Wars.
As you can see, sound signs constitute a very popular category of "trademarks" and these may include not only melodies, but also, for example, sound signals, shouts, etc.
Pursuant to Article 120 of the Industrial Property Law, a trademark may be any sign that can be represented graphically (e.g. musical notation), provided that such a sign is capable of distinguishing the goods of one enterprise from the goods of another enterprise.
Interestingly, however, the European Union Intellectual Property Office (EUIPO) recently rejected an application to register a sound trademark containing the nursery rhyme "Johnny Johnny Yes Papa" precisely because of its lack of distinctive character (decision of June 15, 2023). The EUIPO recalled that the possibility and admissibility of registering a sound trademark depends—as with other types of trademarks—on the perception of the sign by the relevant public. Therefore, in this case, too, the distinctive character of the sound mark is crucial. In the above case, this condition was not met for the following reasons: firstly, due to the length of the sound mark (EUIPO guidelines specify the types of sound marks that are unlikely to be registered – a sound mark cannot be, for example, too long or too short, because the mark must be remembered by the recipient in a single cognitive act), secondly, due to the lack of an easily recognizable melodic structure (a simple, repetitive motif containing tones or sounds characteristic of music featured in children's films or cartoons does not contain a melodic structure allowing the recipient to clearly identify a given brand. Furthermore, a sound mark should identify the commercial origin of a given product or service – therefore, if a sound mark consists of word elements devoid of distinctive character (without clear or unusual sound elements), the sound mark may be considered devoid of distinctive character.
Therefore, as in the case of the famous nursery rhyme described above, a trademark containing phrases taken from a song that is very popular worldwide, and whose various versions and recordings can be easily found online, will not be registered. Furthermore, it lacks acquired distinctive character. If it is impossible to determine, for example, the market share of the products or services in question, the intensity or geographic scope or duration of use of a given sound trademark, or the relevant consumer group identifying the origin of the product or service, then such a mark will most likely be refused registration.
As the above suggests, a sound or melody can certainly be registered as a trademark – just like a taste or even a scent. As usual, however, the devil is in the details, and registering a sound or melody as a trademark depends on meeting certain conditions and the need to designate it in an appropriate form using generally available technology, provided that the designation can be presented in a clear, precise, self-contained, easily accessible, understandable, durable, and objective manner.
This alert is for informational purposes only and does not constitute legal advice.
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