IP Information & News

Jingle bells™ — A guide to registering sounds as trade marks

Alison Cole

By Alison Cole

Senior Trade Mark Attorney

It’s fair to say that 2019 has been a bit of a crazy ride. As a year, it’ll be remembered for many things — Alex from Glasto, the end of Game of Thrones, Keanu Reeves being Keanu Reeves and Greggs owning Piers Morgan with a sausage roll. It has also, according to Marketing Week, been the “year of the sound identity”, with many major brands registering unique sounds as trade marks.

What is a ‘sound mark’?

According to the World Intellectual Property Organisation, sound marks represent a melody that can be graphically presented by notes.

Trade marks can take many forms including signs, shapes, colours and holograms. As with obtaining protection for other non-traditional trade marks, registering sounds isn’t easy. It’s likely that this is what has traditionally put brands off attempting to protect sounds, jingles and ‘mogos’ (musical logos, of course) as trade marks.

Why register sounds as trade marks?

The sound mark trend is all about association. HSBC commissioned a bespoke piece of music to use snippets of it in adverts. Mastercard and Amex have followed suit. It’s no coincidence that these are all finance brands — professional service and online brands which typically have little physical presence or few tangible goods are increasingly looking at how else to showcase their brands to harness and retain consumer attention and loyalty.

Since music evokes so many emotions, sound marks can help to create and maintain a brand connection, even subconsciously. Reusing existing sounds or music is out of the question unless you have the permission of the copyright owner (which can be hugely expensive) but making and protecting your own sounds can capture and convey the essence of a brand.

How to register a sound mark

Since the EUTM Trade Mark Directive 2015 came into force in the UK on 14 January this year, MP3 and other sound files have been accepted by the UK and EUIPO, making it easier for sounds to be recorded and registered. However, there are two key hurdles to get over for your sound to become a trade mark.

1. Represent the sound graphically

The first hurdle to registering a sound mark is to represent it graphically. Representing a musical sound can be relatively easy as it can be transposed onto a score — for example, the well-known Direct Line jingle registration is represented as:

sound-mark.jpg#asset:2985

More unusual sounds are harder to represent. How would you show Chewbacca’s roar or the different ways to pronounce ‘Groot’? Case law offers some guidance by way of the Sieckmann criteria, which specifies that graphic representation of a trade mark must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Musical notation obviously satisfies these tests, but other forms of representation may not. You only have to consider last year’s Laurel/Yanni dispute that took social media by storm, or the noise that (apparently) teens can hear, but adults can’t to know that sounds can in fact be unclear, imprecise, unintelligible and subjective…

2. Ensure the sound is distinctive

The second hurdle is to make sure that the sound is distinctive and sufficiently different from other marks. To be distinctive, the sound must not describe the goods or services for which registration is sought — so trying to register the noise of a kettle boiling for a kettle product, or an aeroplane taking off for an airline are unlikely to be accepted, unless they’re unusual.

Currently, IP offices compare potentially conflicting trade marks from a visual, phonetical and conceptual point of view. Which of the three is given the most importance generally depends on the market and how relevant products/services are ordered and referred to. If sound marks become more common, phonetical similarities and differences will be key.

Where else are we seeing sound marks?

The fashion industry seems to be making inroads into sound registrations — Burberry recently launched a tie-up with Apple to link the UK-based clothing and accessories company to iconic and emerging British musical talent.

Non-music sounds are possibly harder to identify — thanks to the unpredictability of social media, they often become trade marks more by luck than judgment. However, this may be about to change, since the key trend likely to drive the popularity of sounds marks is the virtual assistant. More than a fifth of us now have these devices (like Amazon’s Alexa) in our homes, which means that aural brands are likely to dramatically increase in number and value.

2020 — sound marks are coming…

Work still needs to be done for the likes of Siri and Alexa to recognise brands effectively and differentiate brand names from the descriptive terms for goods. What would be the point of creating and protecting a brand if consumers only ever ask for ‘today’s deal’ or ‘the cheapest pair of trainers’ to be put in their virtual basket?

If the Google Ads model is anything to go by, a more lucrative revenue stream will be for brands to pay a premium to have their products offered as alternatives. Brand owners will need to find ways to monitor and police the airwaves and it’s possible that new sound mark applications will be required to combat aurally-similar competitors with visually or conceptually different names — think about how you pronounce brand names like Dolce & Gabbana, Gucci and Hermès.

We’ve registered a number of sound marks including the iconic “simples” on behalf of CompareTheMarket. Feel free to get in touch with me at ajc@udl.co.uk if you’d like more information on how to register sounds as trade marks.

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