Für Elise decision creates a new sound in trademark law

The European Court of Justice (ECJ) has rendered a landmark decision in Shield Mark BV v Kist ruling that a sound may be registered as a trademark if it is capable of distinguishing the goods or services of one undertaking from those of others and is capable of being represented graphically.

Shield Mark, a Dutch trademark agent that had received numerous requests from clients asking whether it was possible to register sounds as trademarks, registered its own signature tones - the first nine notes of Ludwig von Beethoven's "Für Elise" and the sound of a rooster's crow - as Benelux trademarks. It sought registration in various formats, namely:

• a mere description of the sound or onomatopoeia;
  
  
• a sequence of notes; or
  
  
• the melody formed by the nine notes (graphically) transcribed on a musical stave.

In 1995 Shield Mark started a test case before the Dutch courts to find out whether its registrations would be considered valid. A certain Joost Kist was prepared to play the infringing party, thus allowing Shield Mark to start trademark infringement proceedings on the basis of its sound marks.

In 1999 the Court of Appeals of The Hague rejected Shield Mark's trademark claim, stating that the trademarks were invalid. Shield Mark appealed to the Dutch Supreme Court, which referred a number of questions concerning the registration of sound marks to the ECJ for a preliminary ruling.

The ECJ followed Advocate General Colomer's opinion (see Advocate general's opinion is music to Shield Mark's ears) by ruling that sound signs may be registered as a trademark provided that they are capable (i) of distinguishing the owner's goods or services, and (ii) of being represented graphically, particularly by means of images, lines or characters that are clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The ECJ added that the latter requirement is satisfied where the sign is represented by a musical stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals (as was the case with some of Shield Mark's trademark registrations). A mere sequence of notes (such as E, D#, E, D#, E, B, D, C, A), was considered insufficient.

The ECJ also indicated that the requirement of graphical representation is not satisfied when the sign is represented by way of a description using only written language, such as by means of a simple onomatopoeia without any addition (eg, 'cock-a-doodle-doo') or through an indication that the sign consists of the cry of an animal, or of the notes going to make up a musical work.

The ECJ's decision gives a green light to the registration of sounds that can be represented on a musical stave, such as jingles and tunes. The registration of sounds that cannot be represented on a stave, such as animal sounds or the sound of a Harley Davidson motor, is less obvious. However, the ECJ does not entirely rule out the possibility to register the latter type of sounds either. The ECJ indicates that in such cases, the application for registration must contain more than a mere onomatopoeia.

Finally, the Dutch Supreme Court also wanted to know whether applications for registration in the form of a sonogram, a sound recording, a digital recording or a combination of those methods would constitute a valid form of graphical representation, but the ECJ refused to discuss this question, since Shield Mark did not file any such applications.

It will be interesting to see how the trademark applicants, the national trademark offices, the Office for Harmonization in the Internal Market and the national courts will apply the ECJ's decision, especially when the sounds cannot be represented through musical notation.

Michel Draps, Altius, Brussels