Sound trademark

A sound trademark is a trademark which consists of sounds, rather than visual images or words.

The World Trade Organisation's Trade Related Intellectual Property ("TRIPs") regime requires a uniformity amongst members as to the extent of intellectual property protection, which extends to protection of sounds which operate and trade marks: but the way in which these provisions are interpreted from jurisdiction to jurisdiction is anything but uniform.

In the European Union, Article 4 Council Regulation (EC) No. 40-94 states that any community trade mark may consist of signs capable of graphic representation. This obviously includes sound marks, and so applicants use musical notation to represent their mark. A piece of music - a tune, or a ring tone on a telephone, can they be easily registered as a trade mark (provided, of course, that it meets the Community Trade Mark tests for registrability and distinctiveness). The difficulty presented by the EU approach is that while tunes are capable of registration, noises are not. The sound of a dog barking or the crash of surf cannot be recorded in musical notation.

In Australia, the issue is resolved in a different way: while a sound trade mark can be represented by music notation, the Australian Trade Marks Office Draft Manual of Practice and Procedure states that applications for noises not capable of being recorded as musical notation should:

"include the graphic representation of the mark (e.g. "clip, clop, moo") and a precise and accurate description of the trade mark (e.g. the trade mark consists of the sound of two steps taken by a cow on pavement, followed by a cow mooing"). If the mark consists of a tune an example may be that the trade mark will be represented graphically by the score of the tune and the description will be along the lines' "the trade mark consists of the tune represented on the application form played on a trombone"."

The Australian Trade Marks Registry requires eight separate sound recordings on a cassette tape to be filed with the Registry in support of the application.

In the United States, the question as to whether a sound can serve as a trade mark "depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck". This was the fairly strict test applied by the US Trademark Trial and Appeal Board in the case of General Electric Broadcasting Co., 199 USPQ 560, in relation to the timed toll of a ship's bell clock. More famously, Harley Davidson Co endeavoured to file as a registered trade mark the distinctive "chug" of a Harley Davidson motorcycle engine. On 1 February 1994, the company filed an application for a sound trade mark: "The mark consists of the exhaust sound of applicant's motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use". Nine of Harley Davidson's competitors filed oppositions against the application, arguing that cruiser-style motorcycles of various brands use the same crankpin V-twin engine which produces the same sound. After six years of litigation, with no end in sight, in early 2000 Harley Davidson withdrew their application. Other companies have had more success: MGM have registered their lion's roar, famous basketball team the Harlem Globetrotters have registered their theme song "Sweet Georgia Brown", and AT&T has registered the spoken letters "AT&T" accompanied by music.