Ludwig Van Beethoven and a Kukelekuuuuu

By Lee Curtis, Trade Mark Attorney, Pinsents 

Originally published 23 December 2003 

What is a "Kukelekuuuuu" and what’s it got to do with Ludwig van Beethoven? Well the key lies in Trade Mark Law and a recent decision of the European Court of Justice (ECJ). The ECJ reached an important decision regarding the protection of trade marks which consist of sounds, two of which consisted of the first nine notes of Für Elise by Beethoven and the sound of a cockcrow, an onomatopoeia suggesting in Dutch "Kukelekuuuuu" or in English "cock-a-doodle-doo".

Under an EU Directive dating from 1994 a registered trade mark may consist of any sign capable of being represented graphically and able to make distinctions between different traders. The list is non-exhaustive.

The vast majority of acceptable registered trade marks consist of words and logos. However over the past year the ECJ has considered cases of the registration of shapes, of a single colour and of a smell as a trade mark. Although the ECJ has come to varying decisions in these cases, the guiding principle is that anything can be registered as a trade mark, providing that the subsequent registration defines its limits with certainty.

In October 1992, Shield Mark, a Dutch Law Firm, launched a radio advertising campaign, each of its commercials beginning with a signature tune employing the first nine notes of Für Elise. From February 1993 Shield Mark issued a news sheet describing its services, the Fur Elise signature tune being heard each time a news sheet was removed from a newsstand. Shield Mark also published software for lawyers and marketing specialists and each time the disk containing the software started up a cockcrow was heard.

Mr Joost Kist operated as a legal communications consultant in the Netherlands and during an advertising campaign which began in January 1995, Mr Kist used a melody consisting of the first nine notes of Für Elise and sold a computer program which, when starting up, emitted a cock crow.

Shield Mark had registered their various "jingles" between 1992 and 1999 in the form of fourteen different trade mark registrations at the Benelux Trade Marks Office. The two sounds were represented in various ways in the different registrations. Shield Mark initiated trade mark infringement actions against Mr Kist, the Benelux Courts ultimately referring the matter up to the ECJ for guidance.

In essence, the question put to the ECJ by the Benelux Courts was whether a sound mark can form a registered trade mark and thus by definition by Shield Marks Registration were valid. In short the ECJ answered this question in the affirmative, subject to a number of qualifications and not all of Shield Marks registrations were held to be valid.

The crucial hurdle is whether a sound can be represented graphically. The requirement that it must be represented graphically is summed up in one word "certainty". A court and a potential competitor to the registered proprietor must be able to look at the registration and know what is covered and what scope of protection is given by that registration.

Following on from the decision concerning a smell trade mark, the ECJ found that a registered trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically. The description of a sound simply in words in the ECJ’s opinion lacked clarity and precision. The description of a cockcrow means different things to different people and onomatopoeia such as Kukelekuuuu may be perceived differently, depending on the individual, or from one nation to another. Similarly, the description of a sequence of notes without more information was found by the ECJ as neither clear, nor precise nor self-contained.

However, the court found a stave divided into bars and showing, in particular, a clef, musical notes and rests whose form indicated the relative value and, where appropriate, accidentals (sharp, flat, natural) and consisted of all of the notation determining the pitch and duration of the sounds constituted a faithful representation of the sequence of sounds forming the melody in respect of which registration is sought. So, the registrations of Shield Mark in this form were valid and enforceable.

Accordingly and unfortunately for Mr Kist, the ECJ have found that sound marks can constitute registrable trade marks provided that they are represented in clear musical notation. Traders and advertising executives should take note of this decision as it supports another string to the bow of protection to all those jingles which pervade our everyday life and induce us to buy their products and those of their clients.