Advocate general's opinion is music to Shield Mark's ears
Advocate General Colomer has given his opinion in Shield Mark BV v Joost Kist concerning the protection of sound marks. Colomer believes that Article 2 of the Community Trademark Directive prohibits member states from refusing to register sound marks that are distinctive and represented graphically using musical notation.
Shield Mark, a trademark agency in Amsterdam, owns Benelux trademarks consisting of (i) the first few bars of Beethoven's "Für Elise", which is used for an advertising jingle, and (ii) a rooster's crow, which is heard when opening a Shield Mark computer program. Whereas the Für Elise mark is represented by musical notation (among other things), the rooster's crow is registered as an onomatopoeic description (among other things).
When Joost Kist, a competitor, began using both sound marks, Shield Mark filed an action in the Netherlands for trademark infringement. The Dutch court referred two questions to the European Court of Justice (ECJ). First, does the Community Trademark Directive permit the registration of sounds as trademarks? Second, if the answer to the first question is affirmative, what are the requirements for representing sounds graphically?
Colomer opines that since Article 2 of the European directive gives a very broad definition of 'signs of which a trademark may consist' and does not expressly exclude sounds from such protection, the directive must be interpreted to prohibit EU member states from excluding sound marks from registration. Colomer supports his position by stating that most member states allow the registration of sound marks. He also notes that in Sieckmann v Deutsches Patent- und Markenamt, the ECJ ruled that Article 2 must be interpreted in such a way that a trademark may consist of a sign that is not itself capable of being perceived visually, provided that it is distinctive and can be represented graphically.
Colomer concludes that to be registered, sounds must be represented graphically in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective, as found in Libertel Groep BV v Benelux Merkenbureau. In general, applications in the form of musical notation meet these requirements, whereas onomatopoeic descriptions (like the rooster's crow) do not.
It remains to be seen whether the ECJ will follow Colomer's opinion or whether it will adopt a more restrictive approach.
Friederike Bahr, Beiten Burkhardt Goerdeler, Munich
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