In the case Shield Mark BV v. Joost Kist hodn Memex, an advertising campaign by communication consultant Joost Kist used a melody consisting of the first nine notes of Für Elise and also sold a computer program which, on starting, featured a cockcrow. Both sounds had been registered by Shield Mark, a Dutch intellectual property (IP) consultancy, which brought an action against Kist for infringement of its trademark and unfair competition. The ECJ ruled that the Beethoven melody was capable of being protected, whereas “cock-a-doodle-do” was not.
Daniel Doherty, a trainee solicitor at IP specialists Lawdit Solicitors, claimed that the ruling was “a clear victory for the advocates of the so-called ‘new trademarks’”, such as sounds, smells and shapes. He said: “The ECJ recognised that signs consisting of sounds or noises can qualify for trademark registration and that the member states cannot prohibit, in their national law, registration for such signs.
“Since the Trade Marks Directive came into force, there have been a number of cases on this, and some courts have said you can’t have sound marks. One of the requirements for a trademark is that it can actually be represented graphically, so that you should be able to put it down on a piece of paper. There are various ways you can do this by musical notes or onomatopoeia.”
The Dutch courts referred two questions to the ECJ: first, whether Article 2 of the Trade Marks Directive precluded sounds or noises from being regarded as trademarks, and second, what requirements the directive layed down for sound marks to be capable of being represented graphically.
The ECJ ruled that signs consisting of sounds or noises were “in principle” capable of being registered as trademarks, on condition that they were “capable of distinguishing goods or services without any risk of confusion”. The court also ruled that they were “capable of being represented graphically in a clear, precise and stable manner” which allowed third parties to “understand without difficulty what trademark is being protected”.
On the second point, the court ruled that a trademark could consist of a sound provided that it could be represented “graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. But the court added that those requirements were not satisfied when the sign was represented by a description “using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia”.