ECJ Rules That Sound Marks are Registrable

On November 27, 2003, Europe's highest court held in the case of Shield Mark BV v Kist that sounds can be registered as trade-marks if they can distinguish a person's goods and services from those of another and if the sounds can be represented graphically. Shield Mark had registered the melody consisting of the first nine notes of Beethoven's Fur Elise and the sound of a crowing cock as sound marks in the Netherlands.   It became aware that Joost Kist, a Dutch communications consultant, was using the same sounds in an advertising campaign connected with his business.   Shield Mark brought an action in a Dutch court claiming trade-mark infringement.   The Dutch judges stayed the proceedings and referred the matter to the European Court of Justice (ECJ) to see if EU trade-mark rules allow "sound signs" to be registered. In its ruling, the ECJ decided that a trade-mark can consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically.   The graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.   To be registrable, a sound mark cannot be represented by a mere written description, or an indication that it is a cry of an animal, or by means of a simple onomatopoeia, or by means of a sequence of musical notes.   It must be represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates their relative value and, where necessary, accidentals. In contrast to this ruling, the Canadian Trade-marks Office has stated that it will refuse any future applications for sound marks on the basis that sound marks are not something which can be represented visually.   It remains to be seen whether this recent ECJ decision will have an impact on the Canadian position. For a copy of the decision, see: http://www.ipjur.com/data/031127ECJ-C-283-01.pdf. Summary by: Hung Nguyen