Registry publishes guidelines on sound marks

On July 27 2007 the Hong Kong Trademarks Registry introduced a new chapter to its "Work Manual" to explain its practice on registration of sound marks.

According to the new chapter, the graphical representation of a sound mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective in order to determine the precise nature of the mark applied for.

A description that the mark comprises a particular piece of music or a list of musical notes for example will be considered unclear. On the other hand, the representation of a stave divided into bars showing in particular the clef, musical notes and rests which can indicate the relative value will be acceptable. A particular musical instrument creating a sound can be claimed as an element of the mark.

A written description must also be provided such as "The mark is a sound consisting of five consecutive notes, namely ABCED".

Objection will be raised if the sound is non-distinctive or descriptive or is customary in the current language or in the honest and established practices of the trade. Examples of non-distinctive sounds include the pop of a cork for champagne, simple notes or a series of musical notes for goods that emit sound, such as mobile phones and computers. The latter was seen in the April 3 2007 decision of the registry regarding a sound mark applied for by Nokia Corporation in Class 9 of the Nice Classification for goods including "apparatus for recording, transmission or reproduction of sound or images, computers". A catchy melody or a jingle often used for advertising or as background music for certain goods such as computer games would also be non-distinctive. Further, a complete song or large sections of music would unlikely be viewed as a trademark.

In most cases, evidence of acquired distinctiveness can be submitted. A non-distinctive sound may be registrable if combined with other distinctive elements such as words.

Since the registration of sound marks was introduced in April 2003, just over 10 sound marks have been successfully registered. The first sound mark registered under the current Trademarks Ordinance is the Yahoo! yodel.

Lily Cheung, Wilkinson & Grist, Hong Kong