James Bond book series, started to be published by British author Ian Fleming first in the year 1953, is based on the adventures of a British Secret Service agent bearing the same name. The book series has surely drawn a great interest, but Bond movies series based on the books have attracted a greater interest. The book series has also been adapted to television, radio, animated cartoon, and computer and video games, but the greatest interest has doubtlessly been created by the movie series.
What's more, who will act as James Bond, shortly referred to also as "007", has also become an issue placed an excessive emphasis worldwide. Such famous actors as Sean Connery, Roger Moore, Timothy Dalton, Daniel Craig, and Pierce Brosnan have so far acted as James Bond in movies. In addition, some actresses who are named as Bond girls and have attained a great success in their acting career thanks to this role have acted at love interests in movies of James Bond who is at the same time a famous Casanova. Furthermore, soundtracks of the movie series have also been a big hit worldwide. Let's give a few examples immediately coming to mind: Tina Turner – Goldeneye, Adele – Skyfall, A View to a Kill – Duran Duran, You Know My Name – Chris Cornell, Another Way to Die – Alicia Keys, Diamonds are Forever – Shirley Bassey, Live and Let Die – Paul McCartney...
So, it wouldn't be wrong to say that James Bond series, with almost all of its adaptations, including movies, books, actors, actresses and musical works, has become one of the most important cults of the global popular culture. But of course, there is definitely one more element which should never be excluded and omitted: James Bond Theme Music.
You can recall the theme music at the following link:
This thematic music, probably familiar to all readers, has been composed by Monty Norman and arranged by John Barry in 1962. Though this work has later been the subject matter of a litigation regarding copyright between Norman and Barry, this article is not related to said dispute. In this article, we are going to review the decision taken on March 12, 2021 by the Board of Appeal of European Union Intellectual Property Office (EUIPO) in regard to the application for registration of James Bond theme music as a sound mark. Those who are interested therein may retrieve and see the full text of the decision via the following this link.
Modern marketing techniques developed in the increasing competition conditions of the market lead enterprises to apply more frequently for registration of new types of marks in order to make their trademarks more memorable and impressive in the minds of consumers. Particularly sound marks, to be examined in detail in our article, have become an effective tool for identifying the mark with consumers, due to their characters activating audial senses and triggering auditory memory of audience.1
Hence, these marks, having become an important trade asset for companies, have inevitably had their reflections on the intellectual property law as well. Although registrability of non-traditional trademarks has become the subject of many debates, it is commonly accepted that a great part of them, also including sound marks, are indeed eligible for registration if and to the extent they meet the criteria of "distinguishing the goods or services of an enterprise from those of another and to indicate the source of the goods" and represented in an appropriate form which are the basic functions of a being a trademark in essence. However, there are still some debates about determination of distinctive character of these marks.
The decision of EUIPO Board of Appeal, reflecting a different point of view in respect of sound marks, as referred to herein, deals with the process of application for registration of the very well-known soundtrack of James Bond movies as a sound mark2.
This musical work segment, requested to be registered, may be retrieved and listened from the link: https://euipo.europa.eu/eSearch/#details/trademarks/018168977.
The applicant Danjaq LLC, already holding the right of management of intellectual property rights of James Bond series, has applied to EUIPO for registration of a sound mark, containing a segment of twenty-five seconds from the soundtrack, in the European Union (EU) for the goods in classes 3., 9., 14., 16., 18., 21., 25., 28., 32., 33., and 34.
The related sound mark registration application has first been refused for all classes in reliance upon article 7/1-b of EUTMR which provides that marks devoid of distinctive character cannot be registered. Thereafter, upon an appeal filed by the applicant arguing that EUIPO Examination Division has applied a strict approach towards sound marks and that a distinctive character of minimum degree is indeed adequate for registration, the Board of Appeal has annulled said decision of refusal.
At this point, it is possible to gather the grounds for refusal of sound mark registration application and the approach adopted by the Board of Appeal towards said grounds under some certain headings.
1) Should sound marks be the subject of a stricter assessment in the examination of distinctiveness?
Before examining the criteria of distinctiveness of sound marks, the approach adopted by EUIPO towards sound marks within the frame of "Common Practice 11: New Types of Marks: Examination of Formal Requirements and Grounds for Refusal" dated April 2021 should be mentioned as it contains some important assessments.
The Guideline defines sound marks with a definition commonly accepted in the doctrine as: "any sign containing one or more sounds, regardless of the type of sound contained therein". However, the degree of distinctiveness sought for registration of sound marks is also assessed within the frame of consumer perception pertaining thereto. Accordingly, it is expressed that sounds are signs which are frequently used in trade, and have thus become easily perceivable by consumers as a mark. As a matter of fact, given that sounds are gradually used more and more as a part of branding and marketing strategies in trade, it has become more probable for consumers to perceive them as signs of commercial origin.
This point is further elaborated in "Son D'un Jingle Sonore Plim"3 decision which has thereafter become one of the reference decisions in relation with sound marks. It is stated in the Decision that first of all the distinctiveness criteria should be applied equally to all trademark categories, but in applying such criteria, it cannot either be disregarded that consumers perceive different trademark categories in different ways. Therefore, proof of distinctiveness requires a separate observation in certain trademark categories for which it is more difficult than signs comprised of words or figures to create a commercial origin perception for the consumer. Still, it is noted that sound marks are commonly used in order to aurally demonstrate that a certain product or service is originating from a particular enterprise through jingles or various different melodies particularly in in economic sectors like television broadcasting and associated media segments. This in turn positions sound marks in a more advantageous point than other non-traditional marks in determination of distinctiveness.
The criteria of "pointing out a commercial origin in terms of consumer perception" stipulated for determination of distinctiveness is discussed in the Common Practice in terms of different sound marks. In this aspect, for instance, melodies composed of one or more notes and sounds comprised of a verbal element acceptable as distinctive per se for the concerned classes are considered and treated as distinctive. On the other hand, sounds produced by or connected to the goods and services, e.g. an ordinary vacuum cleaner sound is not considered as distinctive on the ground that it will be perceived by consumers as a functional attribute of the subject goods or services. Similarly, sounds composed of a combination of notes without any resonance, and sound marks comprised of spelling of descriptive verbal elements without a distinctive sound element are also not found distinctive as they will not pave the way for a commercial origin perception.
In our present case, we do not face any one of the below cases where sound marks are accepted to be devoid of distinctiveness. However, it will be seen that EUIPO Examination Division and Board of Appeal are adopting different approaches in assessing the distinctive character of sound mark covered by the decision.
2) Should a sound mark comprised of a movie theme music only be considered distinctive for goods and services related to movie merchandise?
As known, a distinctiveness assessment cannot be done irrespective of classes of goods and services requested to be registered, because a sign considered to be distinctive for a class may not be accepted as distinctive for another class. In sound marks, particularly, sounds reflecting the characteristic features of goods or services requested to be registered are generally accepted to be devoid of distinctiveness for the related class.4
In the course of distinctiveness assessment in terms of classes 3., 9., 14., 16., 18., 21., 25., 28., 32., 33., 34 listed in the application for registration of sound mark, EUIPO Examination Division has, contrary to arguments of the applicant, stated that all of these products are not eligible for commercialization in association with James Bond movies. As an example, cleaning preparations in class 3, household utensils in class 21, alcoholic beverages in class 33 and tobacco products in class 34 are mentioned.
Thus, it is stated that although the soundtrack covered by the application is catchy and rings the bell in the minds of a part of consumers, it does not ever directly create a trademark perception for some of the commodities covered by the application. However, in the decision of refusal, though a reference is made to some certain goods which can by no means be associated with television broadcasting / entertainment sector and are therefore believed not to be capable of pointing out a commercial origin in terms of sound mark, it is opted to decide to refuse the sound mark registration application for all of the subject goods. This approach may be criticized in the light of the rule stipulating that distinctiveness should be assessed separately for each of the goods and services requested to be registered.
With reference to the assessment cited above, EUIPO Board of Appeal has also confirmed that the decision does not describe in detail why the application is devoid of distinctiveness for certain goods. Such a general and comprehensive assessment is found inadmissable because of heterogeneous groups of goods and services serving different purposes and addressing different cycles of consumers.
In this direction, the Board of Appeal has resolved that the application is capable of pointing out a commercial origin for the goods requested to be registered, also in connection with the assessment referred to in the question 3 hereinbelow. According to the Board, James Bond soundtrack which is repeated in all movies with its various versions and with such elements as "007" or "James Bond" has thus acquired not only an artistic character, but also an attribute of pointing out a commercial origin. That is why it is concluded that the soundtrack is distinctive for the classes requested to be registered. So indeed, a review of modern marketing strategies reveals clearly that word, figure and sound marks belonging to worldwide known movie series are especially used commonly to such extent to create a separate market segment.
3) In sound marks, should the duration of sound be considered as a criterion in distinctiveness assessment?
The sound mark covered by the Decision is comprised of the initial twenty-five seconds of James Bond soundtrack. This segment of soundtrack is described as three parts linked to each other in a characteristic manner in the form of a trumpet fanfare, a slow sequence and a guitar solo.
EUIPO Examination Division deduces that the sound mark is composed of a musical segment structure making it difficult for consumers to promptly perceive it as an indicator of commercial origin of the goods requested to be registered, and is not very catchy and less memorable due to length of melody. However, this part of the assessment is not also relied upon a detailed justification just like the previous ones. This attitude of the Office contradicts with the approach based on the idea that consumers act in reliance upon general impression left by trademarks in their minds, which is one of the principles used in distinctiveness assessment. Thus, if this approach is adopted, as a consumer cannot be expected to keep in his mind all elements and details of a trademark, it is important to note whether an impression of commercial origin is promptly formed in his/her mind when he/she faces that trademark. This means to say that it is also true for sound marks that all segments and notes of the trademark cannot be expected to be envisioned, but it is deemed adequate if the trademark as a whole creates a perception in minds of consumers as to commercial origin of the goods.
With regard to the ways of thinking mentioned hereinabove, EUIPO Board of Appeal has incisively stated that neither EUTMR nor case law contains a test revealing which length or type of signs can be accepted to be distinctive. In this context, it is emphasized that a stricter assessment cannot be done as to which features a sound mark should have in order to be catchy and distinctive in general, and also that a lot of sounds equal to or longer than twenty-five seconds in general are registered as trademarks in EUIPO.
According to the Board, the two extreme ends creating a reservation as to distinctiveness of a sound sign are generally sounds which are too short to create resonance, and sounds which are comprised of a composition as a whole and can be recalled only by professional musicians. Considering that the sound covered by the Decision is composed of the initial twenty-five seconds of James Bond soundtrack and is made up of a melody which can easily be kept in mind even by non-professional consumers, it may be said that the subject sound remains between these two edges. Furthermore, even if we assume that the subject melody cannot be recalled from beginning to end, considering that consumers generally recall the initial part of marks, the characteristic trumpet sound at the beginning of melody is also adequate for acceptance of the trademark as distinctive.
In the light of these explanations, the sound mark covered by the application is accepted to be distinctive for all classes, and the decision of refusal of EUIPO Examination Division has been dismissed and annulled by the Board of Appeal.
It should be noted that the doctrine features different ideas and approaches with regard to effects of duration of sounds on their distinctive character. Though some authors argue that sounds longer than a certain duration threshold are not capable of distinguishing the goods and services, there is not any consensus as to how many seconds of duration of sound constitute an obstacle of registration. It may probably be a deliberative choice for EU Trademark Regulation or many national laws and regulations not to refer to an upper or lower limit as to length of duration of sounds. According to a point of view shared by us as well, to impose sound limitations for registrability of sound marks does not accord with the nature of trademark law and the changing requirements of technologies and commercial life.5
As a matter of fact, sounds are signs which may arouse different perceptions in consumers. A sound composed of a simple rhythm in spite of being long in duration may be easily perceived and recalled by the concerned consumers; while another sound being short in duration, but having a complex and polyphonic structure may have an unusual rhythm and harmony for consumers and may therefore be recalled more difficultly. Or in an opposite scenario, sounds long in duration may be very easily perceived and recalled in a cycle of consumers comprised of musicians, while a sound very short in duration may not be fully perceived or later recalled in a cycle of average consumers. 6
Due to such unique characteristics of sounds, it will be more effective to make a separate distinctiveness assessment for each sound mark, even though this approach makes it difficult to formulate a common rule.
In summary, in such sectors as media and advertising which use both visual and audio tools together, sounds have gained importance together with word and figure signs which are defined as traditional trademarks. This development in business life has further emerged also at the point of protection of sounds as unique trademarks, but the way of perception of these signs in the eyes of consumers in comparison to traditional trademarks has paved the way for different discussions. Various assessments as to distinctive character of sounds are so far seen in many decisions, and our article is focused on a discussion of the decision of EUIPO Board of Appeal in respect of James Bond soundtrack of 25 seconds. In our opinion, the decision is based on a correct assessment which also takes into consideration the increasing importance of sound marks for enterprises in the contemporary business life. Accordingly, it is concluded that a sound which may be considered to be fairly long, but is at the same time well-known to a large extent is capable of pointing out a commercial origin to the concerned consumers for the goods and services requested to be registered, in the light of detailed circumstances of our concrete case.
1. Sound Mark and Intellectual Property, accessed via: https://abounaja.com/blogs/sound-mark
3. SON D'UN JINGLE SONORE PLIM decision, no. T-408/15, dated 13/09/2016.
4. Karasu, Rauf." Ses Markaları". Ankara Bar Association FMR Journal, 2007, Issue:2, p.47.
5. Kılıç, Denis. "Ses Markaları". Marmara University, Social Sciences Insitute, Department of Law, Division of Private Law, Master's Thesis, 2019, p. 107.
6. Karasu, s. 37.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.