Article 4 of the Law No. 6769 on Industrial Property indicates that sounds can be registered as trade marks if they are capable of being distinguishable for the goods or services of one undertaking from that of another:
"Trademarks may consist of any signs like [...], sounds and 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 and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor."
Image by Riana Harvey
Apparently, the registrability requirements of a sign and a sound cannot be the same and the evaluation of a sign's trade mark eligibility differs from that of a sound's. According to the Trademark Examination Guideline (Guideline) of the Turkish Patent and Trade Mark Office (the Office), sound marks are categorized as non-conventional trade marks. The Guideline states that a sound must not be short or basic to indicate the commercial source of a good or a service of an undertaking, as previously discussed by the EUIPO [IPKat here]. It also must not be so long that it is perceived as a song. All other sounds not satisfying these criteria will be considered to lack distinctiveness. In its recent decision, the Turkish Court of Cassation (the CoC), upheld the decision of the Court of Appeal (the CoA), which rejected the registration application for a sound of an animated cartoon. Let's listen to it together (only the first 32 seconds were applied for a registration)!
Background
The sound in question is the theme music from famous Turkish animated cartoon "NİLOYA", which also includes the name "NİLOYA", a registered trade mark of the applicant. The sound was applied for goods and services in classes 16, 18, 25, 28, 35, and 41. However, the Office rejected the application due to the sound's lack of distinctive character. Consequently, the applicant filed a cancellation action against the decision of the Office before the IP court.
Decision
In the action, the applicant, who is also the creator of the
"NİLOYA" character, argued that the relevant average
consumer perceives this sound as a trade mark, is able to
distinguish her goods and services from other entities' goods
and services, and the fact that the sound was listened more than 20
million times on YouTube is an indication that Turkish public is
familiar with this arguably distinctive sound. It is further
claimed that the words and the melody "la la la Niloya, Niloya
derler adıma" ["la la la Niloya, they call me
Niloya"] cannot be used by someone else in commerce;
therefore, there should be no obstacle to the registration of the
theme song as a sound mark.
However, the Office found that the sound does not refer to any
commercial source and is perceived only as a children's song.
Additionally, it stated that, even if the sound could be perceived
as a trade mark, it could not have been registered due to being a
non-distinctive one.
Further to the Office's findings, the IP Court stated that
there is no direct or specific relation between the application and
the goods and services covered, and that the sound lasting for 32
seconds is perceived as a song as it comprises introduction,
development, and ending sections, without any catchy phrases and
melodies. Eventually, the IP Court decided that the sound does not
have a distinctive character, that it cannot be perceived as a
trade mark, and that it fails to indicate the origin of the goods
and services covered by the application. The Court emphasized that
it is still a work of art that can be protected by copyright law,
rather than trade mark law.
Although the applicant appealed the IP Court's decision, the CoA agreed with the IP Court's decision and assessments indicating that the sound cannot be registered as a trade mark due to its inability of indicating a commercial source, and hence the decision of the CoA was upheld by the CoC.
Comment
It is obvious that the registrability of a sound as a trade mark
depends upon whether or not the sound is distinctive and if
consumers associate the sound with the goods and services an
undertaking provides. It should be highlighted that several sound
trade mark applications were rejected by IP offices due to
non-distinctiveness. For instance, the sound trade mark application
filed before the EUIPO (no. 018713855, the sound can be found here) [IPKat here], which is highly
similar to the application at issue, was rejected by the EUIPO,
because the sound was a song for children and not sufficiently
distinctive to be registered as a trade mark.
From our point of view, although the application discussed can be
perceived as a song, it includes the phrase
"NİLOYA", which is the applicant's registered
trade mark. There are only a few words in the sound that are
harmonized and memorable, and one of them is the word mark of the
applicant. Therefore, consumers may have been found to associate
this sound with the applicant's cartoon, if the application was
sought to be registered for only cartoons rather than all the
classes 16, 18, 25, 28, 35 and 41. This broad coverage of the
application may also have caused a negative impact in the
assessment of distinctiveness.
First published by The IPKat in Sep 20, 2024.
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