ECJ: A Sound Can Be a Trademark

January 2004

Record Labels, Music Publishers, Internet, Film, Television, Merchandising
Shield Mark BV -v- Kist (t/a Memex) C-283/01

This case arose from a referral from the Dutch courts (Hoge Raad der Nederlanden). The Claimant, Shield Mark BV, had registered a melody consisting of nine notes from Beethoven’s Fur Elise and the sound of a cock crowing (as‘kukelekuuuuu’) as sound marks in the Netherlands. Shield used the nine note sequence in advertising and used the cockerel crow as an opening sequence when software it distributed was opened. Shield became aware that the defendant was using the same nine note sequence in an advertising campaign and also used a cockerel’s crow when software he distributed was opened.

The question was raised whether sounds or noises could be trademarks within the meaning of Article 2 of EC Directive 89/104/EEC. Article 2 provides that a trademark can consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The European Court held that the list of examples in Article 2 was non-exhaustive, so sounds were not excluded as such. However, a sound would have to be able to be represented graphically. The ECJ held that the nine note sequence could be a trademark only where the music can be clearly and precisely represented graphically. Describing the nine note sequence as E, D#, E, D#, E, B, D, C and A would not constitute a graphic representation as it was not clear, precise or self contained. However the use of a musical stave with clef, musical notes, where appropriate rests, accidentals and all necessary notations showing pitch and duration would achieve this. The mark must accurately graphically represent the sequence of sounds forming the melody. To that end the ‘sound sign’ of the nine notes from Fur Elise was registerable in this form provided the mark was also capable of distinguishing the goods and services of one trader from another. But The ECJ held that the description of music by the use of words or by onomatopoeia (the ‘cockadoodaldoo’) would not achieve this. It was not a graphic representation of the mark and so would not be included under Article 2.

COMMENT : The Canadian Trade Marks Office has held that sounds cannot be registered as a trade mark as they cannot be represented visually. The Shield case can also be compared with the ECJ’s decision that a smell could not be a trademark even though the formulae for the smell could be represented as a chemical formulae (see Slecmann -v-Deutches Patent und Markenamt, January 2003 Law Updates).

For further details on this case see the following pdf file:
and The Times 3rd December 2003

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