Seven-note jingle held to lack distinctive character


The Federal Administrative Court has dismissed an appeal against a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had refused to register a jingle as a sound mark for goods in Class 30 of the Nice Classification (Case B-574/2008, October 27 2008).

August Storck KG successfully registered the jingle in Germany on April 14 2005. The mark consisted of seven musical notes (namely, F sharp, B flat, A sharp, F sharp, G sharp, F sharp, F sharp 8va) in F sharp major. August Storck subsequently applied to extend protection of the mark to Austria, Poland and Switzerland.

Based on its guidelines, the IGE stated that:

  • melodies without words lack distinctiveness due to their constant use in commercials; and
  • consumers hearing such melodies for the first time would not recognize them as an indication of origin.

The application was thus dismissed.

On appeal, the Federal Administrative Court upheld the decision of the IGE, but on different grounds. The court agreed with August Storck's argument that the IGE guidelines are too restrictive, since short melodies may be very distinctive (eg, they are used in the army in order to convey certain messages). Therefore, it cannot be said that all melodies without words lack distinctive character. However, the court held that the trademark at issue was too ordinary to obtain protection, since the seven notes were common and by no means characteristic. It pointed out that a sound mark consisting of a melody would not be recognized as a trademark by consumers unless it contained unusual or characteristic elements.

The court's reasoning is questionable. Jingles are often used in advertisements as symbols of commercial origin. Most consumers identify the short Windows 'welcome' sound with Microsoft, and other jingles are equally familiar. In particular, a short melody played at the beginning or end of a televised advertisement is easily memorized and recognized as a symbol of the company which offers the advertised goods and services. However, it would be almost impossible for such a melody to obtain trademark protection if the applicant must prove that it has acquired a secondary meaning. Arguably, even a jingle consisting of seven notes (for which there are thousands of possible variations) can be distinctive.
The trademark community is thus watching closely to see whether August Storck will appeal the decision to the Federal Court.
Lucas M David, Walder Wyss & Partners, Zurich

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