Name That Trade Mark!

The ECJ in the Shield Mark BV v Joost Kist h.o.d.n. Memex case has now confirmed that a jingle trade mark can fulfil the criteria of "being capable of being represented graphically" if it is expressed to be a "sound mark" and classic musical notation is used to describe it.

Shield Mark is the owner of various trade marks registered at the Benelux Trade Marks Office which relate either to the first nine notes of Beethoven’s Für Elise or to a cockcrow. Some but not all of these marks are expressed to be "sound" marks.

The Für Elise marks consist either of a written description as above or of musical notes described either as E, D#, E, D#, E, B, D, C, A or as notes on a musical stave. Some of these are also described as played on a piano. The cockcrow marks either consist of a simple written description (such as "a cockcrow") or the denomination Kukelekuuuuu (an onomatopoeia suggesting, in Dutch, a cockcrow).

Shield Mark has used its "marks" in several ways. For instance some of its radio commercials began with the first nine notes of Für Elise and each time its computer disks (which contain software for lawyers and marketing specialists) start up, a cockcrow is heard. The defendant, Mr Joost Kist, organises seminars on intellectual property. During an advertising campaign in 1995, Mr Kist used a melody consisting of the first nine notes of Für Elise and he also sells a computer program which, when starting up, emits a cockcrow. Shield Mark sued Mr Kist for trade mark infringement and unfair competition. In 1999, the Dutch court dismissed Shield Mark’s trade mark claim on the ground that it was the intention of the Governments of the Member States of Benelux for sounds to be refused registration. Shield Mark appealed to the Hoge Raad der Nederlanden, which decided to stay proceedings and to refer questions to the ECJ for a preliminary ruling.

In essence the questions asked whether Article 2 of the Trade Marks Directive precluded sounds from being registered as trade marks and, if not, by what means could the requirement of being capable of being graphically represented be met in respect of such marks.

Article 2 of the Directive states "A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

The ECJ noted that it was clear from the recitals of the Directive and the language used here (i.e. the word "particularly") that this list of examples of the sorts of things a trade mark may consist of, is not exhaustive. Therefore, although this article does not expressly include any signs that are not in themselves capable of being perceived visually (such as sounds) it does not exclude them either. Furthermore, sounds are not by their nature incapable of distinguishing the goods or services of one undertaking from another. Article 2 must therefore be interpreted as meaning that sounds may constitute a trade mark on the condition that they are represented graphically. Consequently, a Member State cannot preclude the registration of sounds as a matter of principle.

The ECJ then referred back to its answers in Sieckmann (the smell mark case) for the criteria to be satisfied by any graphical representation. Sieckmann made it clear that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that such representation must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective".

It was for the national court to determine, in the specific case, whether the sign before it fulfilled this criteria. However, the ECJ was never-the-less here willing to provide "guidance" as to whether representations by means of musical notes or by a written language descriptions was adequate graphic representation. The ECJ indicated that classical musical notation could be sufficiently "clear, precise, self-contained, easily accessible, intelligible, durable and objective" to fulfil the requirement of being capable of graphic representation. Therefore, if a jingle mark is represented by a stave divided into bars and showing a clef, musical notes and rests whose form indicates their relative values and, where appropriate, accidentals (sharp, flat, natural) it is likely to pass the Article 2 hurdle to registration.

However, the ECJ also indicated that it was far less likely that written descriptions of sounds, onomatopoeia or even musical notes written as a sequence of alphabetical letters would fulfil these criteria.

The ECJ’s conclusions are unsurprising in the light of the earlier Sieckmann case. What is interesting is that the ECJ was willing to move beyond the abstract criteria it provided in Sieckmann to provide concrete "guidance" as to how those criteria should be applied to the various methods of graphic representation employed in the specific case. In doing so it came close once again to making findings of fact. For example, in respect of representation of a sound sign by a description using written language it noted, "it cannot be precluded a priori that such a mode of graphical representation satisfies the requirements…" However, it went on to state that "in the case of signs such as those at issue in the main proceedings, a graphical representation such as the first nine notes of Für Elise or a cockcrow at the very least lacks precision and clarity and therefore does not make it possible to determine the scope of the protection sought. Accordingly, it cannot constitute a graphical representation of that sign for the purposes of Article 2 of the Directive" (our emphasis)

This tendency of the ECJ was recently noted and criticised by Justice Laddie in the Arsenal case. However had the ECJ been less willing to provide such guidance its judgment here may have been of far less practical use to anyone considering applying for such a non-visual mark in the future.

It should also be noted that this judgment only makes clearing the first hurdle to registering non-standard marks a little easier. As consumers are currently considered by the courts to be much less used to perceiving such non-standard marks as badges of origin, most will still be refused registration on the basis of being devoid of distinctive character.