Shield Mark B.V. –v- Joost Kist trading as Memex 2003
In its Judgment of 27 November 2003, the European Court of Justice ruled that sounds are capable of being registered as trade marks under Article 2 of the Trade Marks Directive, provided that the sound can be represented graphically and that such representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Court considered several methods of registering a sound mark and gave the reasons for accepting or rejecting each one. In Shield, the method of representation which was held to fulfil the requirements of Article 2 was the representation of notes on a stave (the usual form of representing musical notation).
Shield Mark B.V. were the proprietors of various trade marks registered at the Benelux trade mark office. The trade marks consisted of various forms of representation of sound relating to the opening notes of “Fűr Elise” and the sound of a cockcrow. For the “Fűr Elise” marks, the representations on the separate registrations were:
1. the first nine notes of “Fűr Elise” on a musical stave;
2. the words “first nine notes of Fűr Elise”; and
3. the sequence of musical notes E, D#, E, D# E, B, D, C, A.
Various of these registrations included a statement that they were “sound marks”.
The registrations for the “cockcrow” marks were:
4. the word “Kukelekuuuuu” (an onomatopoeia imitating a cockcrow); and
5. “a cockcrow”.
Again, reference was made to the registrations being “sound marks”.
Shield Mark made various uses of the registered trade marks including the use of the “Fűr Elise” music in a radio advertising campaign and on display stands in book shops and newspaper kiosks which would play the tune when products were removed from the stand. The cockcrow sound was used when computer software was started up.
In 1995, after registration of the trade marks, Mr Kist commenced an advertising campaign using both the first nine notes of “Fűr Elise” and the sound of a cockcrow at the start-up of a computer program. Shield Mark commenced proceedings against Mr Kist for infringement of this registered trade marks and for unfair competition. On 27 May 1999 the Dutch court granted Shield Mark’s application in relation to unfair competition but dismissed the application relating to trade mark infringement on the ground that it was the intention of the governments of the Member States of Benelux to refuse to register sounds as trade marks. Shield Mark appealed the decision to the Hoge Raad which stayed the proceedings and referred to the European Court of Justice the question of whether the Trade Mark Directive allowed for the registration of sounds as trade marks and, if it did, what was required by the Directive to meet the requirement of graphical representation.
The Hoge Raad asked whether the requirements would be satisfied if the sound or the noise was registered in one of the following forms:
a written description in the form of an onomatopoeia;
a written description in some other form;
a graphical representation such as a sonogram;
a sound recording annexed to the registration form;
a digital recording accessible via the internet;
a combination of those methods;
some other form and, if so, which?
In considering the question of whether sounds could be registered at all, the Court considered the language of Article 2 of the Directive and also the seventh recital of the preamble and concluded that the reference to “examples” made it clear that the list of signs within Article 2 is not exhaustive. Accordingly, the Court decided that Article 2 does not expressly exclude signs which are not capable of being perceived visually. The Court also held that sound signs are not incapable of distinguishing between the goods and services of different undertakings.
Therefore, the Court interpreted Article 2 of the Directive as meaning that sounds may constitute a trade mark if they could be represented graphically.
The Court then considered the methods of graphically representing a sound sign that would fall within the meaning of Article 2 of the Directive and, in particular, whether the methods used by Shield Mark B.V. were appropriate.
The Court first of all considered whether, and if so to what extent, it had the appropriate jurisdiction to answer the question put to it. The Court said that its purpose was not to provide “advisory opinions on general or hypothetical questions” and that it could therefore decline to rule on the hypothetical aspects of the questions. Therefore, the Court did not provide an answer in relation to applications in the form of a sonogram, a sound recording, digital recording or a combination of them (the potential methods of registration put forward by the Hoge Raad).
The Court decided that the conditions which had previously been laid down in relation to olfactory signs (in the Sieckmann case) were also applicable to sound signs which, like olfactory signs, were not capable of visual perception. Therefore, even though such a sign was not of itself capable of being perceived visually, the Court held that it would be prima facie registrable if it could be represented graphically particularly by means of images, lines or characters, and that to be registrable, the representation must be “clear, precise, self-contained, easily accessible, durable and objective”.
The Court made it clear that for a sign to be registered as a sound mark the applicant must also state specifically in the application for registration that it was an application for a sound mark. Without such a statement it would be open to third parties to consider that the registration was either a word mark or a device mark.
The Court then turned to each of the various methods of registration utilised by Shield Mark. The first, a written description of the sound, was considered to lack the necessary precision and clarity as a third party would not be able to determine the scope of the protection of the registration. Accordingly, the Court decided that such a description could not properly constitute the graphical representation required by Article 2 of the Directive.
The Court also rejected the use of onomatopoeia as an appropriate method of graphical representation within Article 2 for a number of reasons including the fact that it would be pronounced differently by citizens of different Member States.
Turning to musical representations, the Court held that a simple sequence of notes such as “E, D#, E, D#, E, B, D, C, A” could not provide the required graphical representation required by Article 2 as it did not make it possible for a third party to determine the pitch or the duration of the sounds that formed the melody. However, the representation of musical notes on a stave with appropriate notation (for example, a clef, musical notes and rests) would indicate the pitch and duration of the sounds and would meet the requirements that the representation be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
When making an application for registration of a sound mark, careful thought should be given to the method used to describe the sound. The European Court of Justice has rejected registrations using words to describe a sound, an onomatopoeic representation and even a list of the notes to be used. For melodies, the Court has approved the use of formal musical notation by use of a musical stave. However, for other sounds which cannot be described in this way, it appears that a further decision, based on one of the methods suggested by the Hoge Raad may be required.