TALLINN UNIVERSITY OF TECHNOLOGY

Faculty of Social Sciences

Tallinn Law School

Idir Laurent Khiar

Registration of Sound Marks as Community Trade Marks in the

European Union: Evolution and Challenges
A Comparative Study with Insights from
Switzerland and the United States

Master Thesis
 Supervisor: Pawan Kumar Dutt, LL.B, LL.M

Tallinn 2016

I hereby declare that I am the sole author

of this Bachelor Thesis and it has
not been presented to any other
university of examination.

Dr. phil. Idir Laurent Khiar

“ ..... “ ............... 2016
The Master Thesis meets the established requirements

Supervisor Pawan Kumar Dutt

“ ..... “ .................... 2016

Accepted for examination “ ..... “ ...................... 2016

Board of Examiners of Law Master’s Theses

……………………………
[..] je me demandais si la musique n’était pas l’exemple unique de ce qu’aurait
pu être – s’il n’y avait pas eu l’invention du langage, la formation des mots,
l’analyse des idées – la communication des âmes.
(Marcel Proust – À la recherche du temps perdu, La Prisonnière, 1923)
Table of Contents

Figures ............................................................................................................................i

Abbreviations and Acronyms ......................................................................................i

A. Introduction .......................................................................................................... 1

I. Research Questions ............................................................................................. 2

II. Methodology ................................................................................................... 4

III. State of the Art ................................................................................................ 5

IV. Relevance of this Study ................................................................................... 6

V. Structure of this Study ..................................................................................... 6

B. Fundamentals of Sound ....................................................................................... 7

I. Sound, Music, Noise and Timbre ....................................................................... 8

II. Music Genres................................................................................................... 9

III. Definition of Sound Mark ............................................................................... 9

IV. Audio Branding ............................................................................................. 10

1. Jingles, Audio Logos, Sound Icons ........................................................... 10

2. Brand Voices, Brand Songs, Soundscapes, Sound Design ........................ 13

3. Conclusions ............................................................................................... 14

C. The Trade Mark: Protection Criteria .............................................................. 15

I. Basic Requirements for Attaining Trademark Status ....................................... 15

1. International Legal Framework ................................................................. 15

2. EU Trade Mark Legislation ....................................................................... 18

3. Conclusions ............................................................................................... 19

II. Trade Mark within the Meaning of TM Directive/ CTM Regulation ........... 19

1. Capability of a Sign to Function as an Indication of Origin ...................... 21

2. Capability of a Sign to Distinguish............................................................ 23

3. Capability of a Sign to be Represented Graphically.................................. 24

 4. Conclusions ............................................................................................... 26

III. The Sound Mark within the Meaning of the CTM Regulation ..................... 27

1. The CJEU on Sound Marks ....................................................................... 27

2. Change in Registration Practice: Sonograms and Sound Files.................. 29

3. Conclusions ............................................................................................... 31

IV. The Sound Mark in Other Jurisdictions ........................................................ 32

1. Switzerland ................................................................................................ 32

2. United States .............................................................................................. 33

D. Grounds for Refusal: The EU in Comparison to Switzerland and the US ... 35

I. Absolute Grounds for Refusal .......................................................................... 36

1. Article 7 (1) (a) CTM Regulation: Non-conforming with Article 4.......... 37

2. Article 7 (3) CTM Regulation: Acquired Distinctiveness ......................... 40

3. Article 7 (1) (d) CTM Regulation: Customary Signs ................................ 51

4. Article 7 (1) (c) CTM Regulation: Descriptive Signs ............................... 53

5. Article 7 (1) (b) CTM Regulation: Non-Distinctive Signs ........................ 60

6. Other Absolute Grounds for Refusal ......................................................... 72

II. Relative Grounds for Refusal ........................................................................ 73

III. Conclusions ................................................................................................... 74

E. The New TM Directive and Sound Marks ....................................................... 79

F. Conclusions ......................................................................................................... 80

G. Bibliography ....................................................................................................... 82
Figures
Figure 1 I'm lovin' it jingle, McDonald’s (CTM no. 003661907) ............................... 10
Figure 2 Audio logo of Nokia Corporation (CTM no. 001040955) ............................ 11
Figure 3 Audio logo of Metro-Goldwyn-Mayer (CTM no. 005170113)..................... 11
Figure 4 Audio logo of Twentieth Century Fox Film Corp. (CTM no. 012438628) .. 11
Figure 5 Audio logo of Hornbach-Baumarkt (CTM no. 009274242) ......................... 11
Figure 6 Sound icon of Intel (CTM no. 003481744) ................................................... 12
Figure 7 Sound icon of Samsung (CTM no. 010137594) ............................................ 12
Figure 8 Sound icon of Samsung (CTM no. 011226552) ............................................ 12
Figure 9 Brand Voice of HEXAL (CTM no. 003699204)........................................... 13
Figure 10 Funnel of causality: Illustrating the OHIM’s assessment practice .............. 75
Figure 11 Assessing distinctiveness: The three dimensions based on OHIM practice 76
Abbreviations and Acronyms
AG Advocate General
Ann. Annex
App. Appendix
Art. Article
Az. Aktenzeichen
BGE Bundesgerichtsentscheid
BVGE Bundesverwaltungsgerichtsentscheid
CANJLT Canadian Journal of Law and Technology
CCPA Court of Customs and Patent Appeals
Cf. Compare
CJEU Court of Justice of the European Union
CommsL Communications Law
Corp. Corporation
CTM Community Trade Mark
CTM Regulation Council Regulation 207/2009, OJ 2009 L 78/1
Dec. Decision
ECR European Court Reports
Ed. Editor
E. D. Pa. Eastern District of Pennsylvania
E.g. For example
EIPR European Intellectual Property Review
EntLR Entertainment Law Review
Et al. Et alii
Et seq. Et sequentia
EU European Union
FEDCBJ Federal Circuit Bar Journal
OHIM Examination Guidelines Guidelines for Examination in the OHIM on
CTMs, Part B, Examination, Section 4, Absolute
Grounds for Refusal
FSupp Federal Supplement
GRUR Gewerblicher Rechtsschutz und Urheberrecht

i
HABM Harmonisierungsamt für den Binnenmarkt
ICLQ International & Comparative Law Quarterly
IGE Institut für Geistiges Eigentum
IIC International Review of Intellectual Property and
Competition Law
Id. Idem
I.e. Id est
IGE Trade Mark Guidelines IGE, Richtlinien in Markensachen
In re in the matter [of]
IPQ Intellectual Property Quarterly
IPJ Intellectual Property Journal
IR International Registration
JIPR Journal of Intellectual Property Rights
Lanham Act Code of Laws of the United States of America 15
U.S.C. § 1051 et seq. Trademark Act of 1946 as
amended
MA Madrid Agreement as amended on November 12
2007
MarkenG Gesetz (Germany) über den Schutz von Marken
und sonstigen Kennzeichen (Markengesetz) vom
25. Oktober 1994
MarkenV Verordnung (Germany) zur Ausführung des
Markengesetzes (Markenverordnung) vom 11.
Mai 2004
MP Madrid Protocol, 1989 Protocol Relating to the
Madrid Agreement Concerning the International
Registration of Marks as amended on November
12 2007
MGM Metro-Goldwyn-Mayer Corp.
MS Madrid System for the International Registration
of Marks
Middle District MD
N. Note

ii
Niece Agreement 1957 Nice Agreement Concerning the
International Classification of Goods and Services
for the Purposes of the Registration of Marks as
amended on September 28 1979
No. Number
OHIM Office for Harmonization in the Internal Market
OS Organised Sound
Para. Paragraph
Paris Convention 1883 Paris Convention for the Protection of
Industrial Property as amended on September 28
1979
Rec. Recital
Reg. Regulation
Res. Resolution
Sent. Sentence
sic! Zeitschrift für Immaterialgüter-, Informations- und
Wettbewerbsrecht (Switzerland)
Seq. Sequence
SR Systematische Sammlung des Bundesrechts
TM Directive European Parliament and Council Directive
2008/95/EC, OJ 2008 L 299/25
TMEP TTAB, Trademark Manual of Examining
Procedure
TmPA Federal Act on the Protection of Trade Marks and
Indications of Source, Trade Mark Protection Act
(Bundesgesetz (Switzerland) über den Schutz von
Marken und Herkunftsangaben vom 28. August
1992 (Markenschutzgesetz, SR 232.11))
TTAB Trademark Trial and Appeal Board
TRIPS 1994 Trade-Related Aspects of Intellectual
Property Rights. Ann. 1 C to the Agreement
Establishing the WTO as adopted on April 15
1994

iii
US(A) United States (of America)
USC United States Code
(Code of Laws of the United States of America)
USPQ United States Patents Quarterly
V. Versus
Vol. Volume
WIPO World Intellectual Property Organization
WRP Wettbewerb in Recht und Praxis

iv
 A. Introduction
The Christian church was one of the first organisations to successfully create an audio brand
identity in Europe. For almost 1600 years, church bells have called worshippers to attend church
services, weddings, funerals or other religious events.1 Today, for many companies possessing
an audio brand, identity has become an important success factor. By creating a lasting and
positive impression on consumers, it helps companies to distinguish themselves and their
products from those of competitors. Audio branding can be referred to as establishing and
maintaining an acoustic identity for a company and its products.2 In that regard, sound marks, or
trade marks that include sound as a sign, play a key role.
Some countries, such as the United States (US), have a long history of sound marks. Other
countries have only recently established a proper legal basis for the registration of sound marks.
In Canada, it was only made possible to register sound marks in 2012, on the basis of the
Canadian Trade-Marks Act.3 China followed in 2013 with the adoption of the New Trade Mark
Law of the People's Republic of China.4 In Japan, it is only since this year, 2015, that it became
possible to register sound marks.5 In Russia, the earliest registration of sound marks dates back
to 2001.6 However, it is only since 2008 that the Civil Code of the Russian Federation explicitly
allowed the registration of non-traditional marks.7 A similar situation is found in India, where the
Indian Trade Mark Registry began to generally register unconventional trademarks in 2008,

1
K. Luty & D. Philippart, Clip Notes for Church Bulletins, vol. 1, at 76 (1997).
2
See infra at 5.
3
A. Bella, Trademark registration: Some Sound Practical Tips for Canadians, The IPKat, 30 March
2012. http://ipkitten.blogspot.com/2012/03/trade-mark-registration-some-sound.html [18.08.2015]
4
W. Zhang, L. Wei & Y. Li, The Third Revision of Chinese Trademark Law - Analysis and Comment, 45
IIC 5, at 556-586, para. 558 (2014).
5
Act for Partial Amendment to Patent Act, Etc. (Act No. 36 of May 14, 2014) M. Takahashi & R
Hashimoto, Amendment to Trademark Act of Japan - New Marks, Including Color Marks and Sound
Marks, Can Be Protected, Jones Day, September 2014. http://www.jonesday.com/amendment-to-
trademark-act-of-japan---new-marks-including-color-marks-and-sound-marks-can-be-protected-09-04-
2014/# [18.08.2015].
6
According to the trade mark register of the Russian Federation [30.10.2015].
7
Art. 1482 of the Civil Code of the Russian Federation (as amended up to 2014), Part IV (The Right to
the Trademark and the Right to Service Mark).

1
despite previous instances of sound marks.8 Other countries took a more distinctive approach to
the registration of sound marks. Until 2009, Switzerland only considered certain sound marks for
registration, i.e. only those containing textual elements.9 Similar rules also applied to those
seeking Community Trade Marks (CTMs) for their sound marks in the European Union (EU).

Until ten years ago, musical notation was required for registering a sound mark as a CTM.10 This
practice changed in 2005. As a result, the number of sound marks registered with the Office for
Harmonization in the Internal Market (OHIM - the office responsible for granting CTMs)
substantially increased. Today, the OHIM counts 178 sound marks registered as CTMs, a
number which is steadily growing.11 However, EU member states still require the sound to be
graphically represented as musical notation in order to be registered. Thus, the EU is
characterised by the existence of two different approaches towards sound marks on its territory:
one at the European level and one at the national level.12

I. Research Questions
The amendment to the Implementing Regulation for Community Trade Marks adopted in 2005
was expected to facilitate the registration for sound marks as CTMs in the EU.13 This study
investigates the protection of sound marks in the form of CTMs, in particular, the registration
practice of the OHIM.14 In that regard, this study addresses the following two main research
questions:

8
Intellectual Property Law in India, Nishith Desai Associates (NDA), December 2013.
http://www.nishithdesai.com/fileadmin/user_upload/pdfs/Research%20Papers/Intellectual_Property_Law
_in_India.pdf [18.08.2015], at 3.
9
M. Bundi, August Storck KG v Swiss Federal Institute of Intellectual Property: Switzerland: Trade
Marks – Registration of Acoustic Marks without Textual Elements, 31 EIPR 12, N84 (2009).
10
See infra at 31.
11
As of November 24, 2015.
12
See infra at 81.
13
See Commission Reg. 1041/2005, OJ 2006/1 (Community Trade Mark Implementing Reg., CTMI
Reg.); see supra at 32.
14
Council Reg. 40/94, OJ 201994 L 11/1 established the CTM. It was later repealed by Council Reg.
207/2009, OJ 2009 L 78/1 (Community Trade Mark Reg., CTM Reg.). Until today, two different
trademark systems coexist in parallel: one system at EU level and one at member state level. However,
trade mark legislation at member state level is widely harmonised based on Council European Parliament

2
  How has the notion of sound mark as a legal concept changed from the past to today?
 How do the necessary capabilities of a sign to perform the function of trade mark apply
to sound signs and how are they reflected in the OHIM’s registration practices? In
particular, how does the OHIM conceptualise the notions of descriptiveness and non-
distinctiveness as important absolute grounds for refusal and do differences exist with
regard to other jurisdictions?

Of the criteria relating to registrability of trade marks, distinctiveness is the most crucial.15 This
is emphasised in the TRIPS provisions related to trade mark registration. They stipulate that a
sign’s capability of distinguishing goods or services is the sole essential determinant of its
suitability for registration.16
A comparison with other jurisdictions allows the exploration of legal rules and their
justifications as well as a discussion of the legal history and practical examples to account for
patterns of similarity and difference. Such an approach contributes to a deeper understanding of
EU trade mark legislation and practice and provides an excellent basis for reflection on a rather
young subject, sound marks.
From a practical point of view, this study will not go beyond the legal conceptualisation and
registration of sound marks. It will not address the genuine use requirement, nor will it address
the protective effect of trade mark registration. Those areas remain open to further research.
Moreover, this study will not address trade mark protection at EU member state level. As of
today, the registration practice of the OHIM and that of EU member states differ with regard to
sound marks. While the OHIM accepts sonograms and sound files as complicit with the legal
requirement of graphical representation, national registries in EU member states still require

and Council Directive 2008/95/EC, OJ 2008 L 299/25 (Trade Mark Directive, TM Directive) and its
predecessor, the First Council Directive of 21 December 1988 to approximate the laws of the Member
States relating to trade marks 89/104/EEC, OJ 1989 L 40 / 1.
15
J. Philips, Trade Mark Law, A Practical Anatomy, at 86 (2003).
16
Id.; Trade-Related Aspects of Intellectual Property Rights. Ann. 1 C to the Agreement Establishing the
WTO as adopted on April 15 1994 (TRIPS), cf. infra at International Legal Framework15.

3
musical notation.17 This issue will be briefly addressed in light of the new Trade Mark Directive
(TM Directive 2016) expected to enter into force in the second half of 2016.18

II. Methodology
Until today, the OHIM has registered 176 sound marks; of these it declined approximately five
percent.19 At the EU level, however, almost no settled case law has emerged that specifically
addresses sound marks. This study therefore takes a comparative approach to gain a deeper
understanding of the OHIM’s registration practices, and in particular, the absolute grounds for
refusal of registration. After investigating the available OHIM and Court of Justice of the
European Union (CJEU) settled case law as well as OHIM decisions in which registration of
sound marks were declined, this work addresses the registration practices and relevant settled
case law in two other jurisdictions: Switzerland and the US.

The idiosyncrasies of both Switzerland and the US provide a particularly interesting comparison.
Switzerland is not only the home of the World Intellectual Property Organization (WIPO); it also
shares a similar history in regard to the registration of sound marks as the EU. Developments in
the field of trade mark legislation and practice at the EU level have not gone unnoticed in
Switzerland. Switzerland’s practice with regard to sound marks may provide valuable insights,
especially in the examination of its deviations from EU practice. Examples from the US will
provide additional insights. The US’ history of registering sound marks which dates back to the
1950s. Since then, the US has developed a dedicated system with regard to the registration of
sound marks.20 This study will only address the federal system for trade mark registration in the
US.

17
See, e.g. Website of the Intellectual Property Office (United Kingdom), Trade Marks Manual.
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/454221/Manual-of-trade-
marks-practice.pdf [18.08.2015].
18
See supra at 84.
19
As of November 20, 2015.
20
Ianeva, see infra note 24, at 153; Ahuja, see infra note 24, at 576.

4
III. State of the Art
Not many in-depth studies on sound marks exist in Europe; although German scholars have
investigated this subject more profoundly.21 They often address specific aspects related to the
registration of sound marks, such as graphical representation.22 Others investigate sound marks
by establishing and assessing a phenomenology of potential sound marks.23 Reflecting the
internationally most common approach to the issue, some studies investigate sound marks in the
broader context of non-traditional marks, such as smells, tastes or colours.24 While not many in-
depth studies exist on sound marks, a substantial amount of journal articles discuss non-
traditional marks in general.25 However, by addressing sound marks in the wider context of non-

21
See, e.g. R. Landfermann, Handy-Klingeltöne im Urheberund Markenrecht – Schriften zum deutschen
und internationalen Persönlichkeits- und Immaterialgüterrecht, Vol. 017, (2006); S. Bahner, Der Schutz
akustischer Marken nach dem deutschen Markengesetz und der europäischen
Gemeinschaftsmarkenverordnung (2005); U. Foerstl, Der Schutz akustischer Kennzeichen nach dem
MarkenG (2003); C. Kortbein, Markenschutz für Hörzeichen, Probleme der praktischen Verwendung
sowie des Eintragungs-, Widerspruchs und Verletzungsverfahrens (2005); R. A. Becker,
Kennzeichenschutz einer Hörmarke, WRP, at 56-65 (2000); C-P. Fritz, Gegenwart und Zukunft von
Markenformen unter besonderer Berücksichtigung akustischer Zeichen: Registrierbarkeit von
Markenformen im deutschen, europäischen und internationalen Recht (1992).
22
See, e.g. J. Novak, Die Darstellung von besonderen Markenformen, Hörmarke – Geruchsmarke –
Bewegungsmark (2007); C. Hoffrichter-Daunicht, Grafische Darstellbarkeit von Hörmarken: Wo ist das
Problem? GRUR, at 935-936 (2007); A. Bender, Die grafische Darstellbarkeit bei den neuen
Markenformen, in V. Bomhard et al. (eds.), Harmonisierung des Markenrechts: Festschrift für Alexander
von Mühlendahl zum 65. Geburtstag (2005); U. Hildebrandt, Zum Begriff der grafischen Darstellbarkeit
des Artikel 2 Markenrichtlinie, Anmerkungen zu den Schlussanträgen zur Riechmarken-Vorlage des
BPatG, 1 MarkenR, at 1-5, (2002).
23
See, e.g. I. Suter-Sieber, Die Hörmarke: Schutzvoraussetzungen und Schutzinhalte nach
schweizerischem Recht (2012); L. Meyer, Urheber- und markenrechtliche Überlegungen zum Klingelton,
3 Medialex: Zeitschrift für Medienrecht / Revue de droit des médias, at 149-154 (2003).
24
See, e.g. N. Ianeva, Registration of Non-Conventional Signs Under the Community Trademark Regime
(2008); U. Hildebrandt, Marken und andere Kennzeichen (2009); S. Sandri & S. Rizzo, Non-
Conventional Trade Marks and Community Law, at 133-149 (2003).
25
See, e.g. T. Kongolo, Intellectual Property and Misappropriation of the Public Domain, 33 EIPR 12, at
780-794 (2011); G. Humphreys, Non-Conventional Trademarks: An Overview of Some of the Leading
Case Law of the Boards of Appeal, 31 EIPR 9, at 437-448 (2010); V. K. Ahuja, Non-traditional Trade
Marks: new dimension of trade marks law, 32 EIPR 11, at 575-581 (2010); M. M. S. Karki, Non-

5
traditional marks, those publications discuss sound marks rather superficially. This phenomenon
might reflect that, in many countries, registration of sound marks has become possible only
recently.26 Finally, the deeper and more comprehensive studies or journal articles address sound
marks generally in the context of national trade mark legislation. Not one of these articles
focuses on OHIM practice concerning sound marks. In that regard, this study sheds light on a
blind spot in legal research.

IV. Relevance of this Study

This study investigates the present EU sound mark law as well as the OHIM’s registration
practices. By addressing sound marks in the meaning of the CTM Regulation and by
investigating the trade mark registration practices of the OHIM, this study evaluates how the
common principles of trade mark protection apply to sound marks at the EU level. A
comparative approach is beneficial as it shows how other jurisdictions, i.e. Switzerland and the
US, apply common principles of trade mark protection to sound marks. In addition, this study
provides valuable input on how to further develop the registration practice for sound marks in
the EU, especially, with regard to CTMs. Finally, the comparative approach might serve as
useful guidance for applicants seeking successful sound mark protection in the EU and in other
jurisdictions, not least based on the Madrid System.27

V. Structure of this Study

This study is structured along the following lines. Chapter B begins with an introduction to the
fundamentals of sound. It forms the basis for defining the notion of sound mark for this study. It
is followed by a brief introduction to audio branding illustrated with sound mark examples.
Chapter C addresses the protection criteria for trade marks. It discusses the notion of trade mark
within the meaning of the EU’s TM Directive and CTM Regulation and concludes by
elaborating on how the notion of sound mark as a legal concept has changed from the past to

Traditional Areas of Intellectual Property Protection: Colour, Sound, Taste, Smell, Shape, Slogan and
Trade Dress, 10 JIPR 11, at 499-506 (2005); R. Sieckmann, Die Eintragungspraxis und –möglichkeiten
von nicht-traditionellen Marken innerhalb und ausserhalb der EU, MarkenR 1, at 236-266 (2001); D.
Lyons, Sounds, Smells and Signs, 16 EIPR, at 541-543(1994).
26
See infra at 1.
27
The Madrid System provides an instrument for registering and managing trade marks worldwide, i.e.
on the territory of its members.

6
today. This chapter takes a closer look at the notion of sound mark in two other jurisdictions,
Switzerland and the US. Chapter D examines the grounds for refusal stipulated in the CTM
Regulation and applied by the OHIM with regard to registering sound marks as CTMs. It
focuses, in particular, on how the OHIM conceptualises the notions of descriptiveness and non-
distinctiveness. This chapter juxtaposes the EU with Switzerland and the US in terms of CTM
regulation. The relative grounds for refusal are only briefly addressed as a more detailed
discussion would go beyond this study’s scope. Chapter E briefly addresses the difference
between the registration practice for sound marks at the EU level (CTM) and at the member state
level as well as the upcoming changes as a result of the new Trade Mark Directive (TM
Directive 2016) expected to enter into force in the second half of 2016. Chapter F concludes this
study. It summarises the most important insights concerning sound marks with regard to the
research questions guiding this study. It also incorporates the insights from the sound mark
registration practice in Switzerland and the US.

Initially, this study tried to treat gender equally. It used the terms she and he simultaneously
where the origin of the gender is unknown, such as with regard to the notion of consumer or
customer. For easier reading, the final version of this study uses male pronouns for both genders.
Nevertheless, the author acknowledges the need for sensitivity for gender issues in science.

This study is based on the available legislation and literature as of November 2015. If not
otherwise cited, all trade mark illustrations are derived from online databases, in particular, the
OHIM’s eSearch plus.28

B. Fundamentals of Sound
The rustling of autumn leaves, snippets of a conversation, loud voices, laughing, the whistle of a
locomotive, the detonation of a bomb, movement of piano keys or the bang of an exploding
balloon are all commonly referred to as sounds. Some of those sounds would be considered
music while others simply noise. In some cases it would be even unclear to which category
(music or noise) a particular sound should belong to. It is necessary for this study to clarify the

28
Website of the OHIM, eSearch plus, http://oami.europa.eu/eSearch/#basic [18.08.2015].

7
notions of sound, music and noise. This requires refreshing some basic physics and music
knowledge.29

I. Sound, Music, Noise and Timbre

Sound is triggered by a mechanical event, for example by clapping hands together. In physics,
this is referred to as creating a mechanical vibration or sound wave. The clapping sound
promulgates itself to the ears of listeners by inducing movement in the air between the
mechanical event, the clapping, and the listeners. The sound wave then reaches our eardrum. It is
a thin, cone-shaped membrane which begins moving when reached by the sound wave.30 Of the
physically measurable sound, human beings can only discern parts of it. Those discernible parts
are referred to as acoustic impulses or signals. The parameter used to measure sound is
frequency, expressed in Hertz (Hz). One Hz means that an event repeats itself once per second.
The more an event repeats itself per second, the higher pitched the acoustic impulse seems. The
fewer repeats of an event per second there are, the lower the perceived pitch of an acoustic
impulse is. Another important parameter used to measure sound is amplitude. It is quoted in
Decibels (dB). The higher a dB rate, the louder we sense an acoustic impulse. The lower the dB
rate, the quieter we sense an acoustic impulse.
Why do humans sense music and noise differently? When hearing an acoustic signal, humans
automatically link an acoustic impulse to a tone pitch. The categorisation is based on the
frequency of the sound. Frequency can be graphically described as a wave line over a certain
period of time. A sound with a discrete frequency spectrum allows humans to categorising it
based on a particular tone’s pitch. Sounds with a discrete frequency are sensed as music, such as
a pure sound. A pure sound consists of only one sound wave of a particular frequency, for
example a sine tone. A sine tone has 440 Hz. This means that an event repeats itself 440 times
per second. Such an acoustic signal is generally perceived as being a sterile or empty sound.
Often it resembles the whistle of a flute. Contrary to that, sounds that are sensed by humans as
noise display an irregular frequency spectrum. In other words, the pattern of the sound is
aperiodic. The seemingly regular noise of a running water tap should not be confused with a pure
sound. The impression is merely the consequence of overlapping sine waves of different
frequencies resulting in a so-called continuous spectrum. In its essence, the acoustic signal

29
For this chapter, the author draws from his high school physics and music classes.
30
Loudspeakers generate sound based on force exerted on a membrane suspended in an electrostatic field.

8
remains aperiodic and, thus, simply noise. Eventually, the sound associated with a particular
pitch can be visualised and represented graphically through the use of musical notation.
An important notion used in relation to music is timbre. To put it simply, timbre is what
distinguishes the sound of a music instrument from another instrument, even when they have the
same pitch and loudness.31 Timbre is the result of multiple overlapping partial tones, i.e. sinus
waves. A trombone rich in overtones is perceived as producing a bright sound, whereas a
transverse flute poor in overtones is perceived as producing a mellow sound.

II. Music Genres

Often, the notion of sound is commonly used to refer to music genres, such as classic, rock, pop,
jazz or folk. Music genres should not be confused with the notion of timbre. Genres refer to
certain musical traditions. Thus, sound in the meaning of music genres reflects a cultural
phenomenon.32 Obviously, the notion of sound as referring to different music genres is subject to
conventions and classifications that can change over time.

III. Definition of Sound Mark

World Trade Organisation (WTO) legislation provides a basic definition of a trade mark.33 It
refers to it as […] a sign that is capable of distinguishing the goods or services of one
undertaking from those of other undertakings [...].34 For this study, the notion of sound mark
refers to: one or more acoustic signals that together form a sound sign which has gained trade
mark protection. Thus, a sound sign simply refers to tones or noises that can be heard by
humans, regardless of their sources of origin or characteristics. The capability of a sound sign to
eventually perform the function of a trade mark is subject to a legal assessment prior to its
registration as a sound mark, i.e. trade mark. Not every sound sign qualifies as a trade mark. For

31
It is worthwhile to note that physicist and musician differ in their understanding and use of the notion
of timbre. Physicists relate timber to an acoustic impulse emanated by one instrument, i.e. a sine tone.
Musicians relate timber to the acoustic impulse emendated by multiple instruments playing together, i.e.
an ensemble.
32
J. Samson, Genre, Oxford Music Online. http://www.oxfordmusiconline.com/subscriber/
Art./grove/music/40599 [03.11.2015].
33
Trade-Related Aspects of Intellectual Property Rights. Ann. 1 C to the Agreement Establishing the
WTO as adopted on April 15 1994 (TRIPS).
34
Art. 15, para. 1 of TRIPS.

9
the sake of analytical precision, this study avoids referring to a sound sign as trade mark prior to
successful registration or being widely accepted as a trade mark. In that regard, this study differs
from other publications which use sign and trade mark interchangeably.

IV. Audio Branding

At its core, audio branding can be understood as establishing and maintaining an acoustic brand
identity for a company.35 Unlike the law’s relationship with the term trade mark, the word brand
takes on another meaning within the business community. By focusing on sound marks in a
strictly legal sense, this study applies a much narrower approach to the notion of audio branding
than business or marketing professionals would. From a marketing perspective, sound marks can
be used in different ways. Because of this, distinctive lexicon has emerged. Sound marks can
take the form of jingles, audio logos or sound icons.36 Other instruments of audio branding are
brand voices, brand songs or commercial songs, sound grounds and soundscapes as well as
sound designs.37 In most cases they are unlikely to be beneficial for trade mark protection.
However, this does not exclude them from being subject to copyright protection.

1. Jingles, Audio Logos, Sound Icons

Jingles are advertisement slogans that are set to music, such as the famous McDonald’s slogan,
I'm lovin' it.38 Figure 1 shows the graphical representation of the sound mark as deposited with
OHIM for registration as CTM.

Figure 1 I'm lovin' it jingle, McDonald’s (CTM no. 003661907)

35
What is audio branding? Audio Branding Academy, http://audio-branding-academy.org
/aba/knowledge/what-is-audio-branding/ [18.08.2015].
36
Technical terms audio branding, Audio Branding Academy, http://audio-branding-academy.org
/aba/knowledge/what-is-audio-branding/ [18.08.2015].
37
Id.
38
Id.

10
Audio logos are short pieces of music or noise, usually lasting a few seconds.39 They are used as
a signet and have the same effect as textual marks. Among the most famous audio logos are the
Nokia tunes (Figure 2), Metro-Goldwyn-Mayer’s (MGM) sound of a roaring lion (Figure 3), the
Twentieth Century Fox Film Corporation’s drums played before its movies (Figure 4), and
Hornbach’s chanted words Yippie ja Yippie Yeah (Figure 5).

Figure 2 Audio logo of Nokia Corporation (CTM no. 001040955)

Figure 3 Audio logo of Metro-Goldwyn-Mayer (CTM no. 005170113)

Figure 4 Audio logo of Twentieth Century Fox Film Corp. (CTM no. 012438628)

Figure 5 Audio logo of Hornbach-Baumarkt (CTM no. 009274242)

39
Technical terms audio branding, Audio Branding Academy, http://audio-branding-academy.org
/aba/knowledge/what-is-audio-branding/ [18.08.2015].

11
The shortest elements in audio branding are sound icons.40 They provide real or artificial noises
for products.41 Common examples are sounds emanating from computer programs, computers,
notebooks, tablets, smart phones or other electronic devices. Some of the most famous sound
icons are Intel’s (Figure 6) and Samsung’s chimes (Figure 7). Samsung’s water droplet sound
when performing a movement on the surface of the screen of a tablet or smart phone is another
well-known sound icon (Figure 8).

Figure 6 Sound icon of Intel (CTM no. 003481744)

Figure 7 Sound icon of Samsung (CTM no. 010137594)

Figure 8 Sound icon of Samsung (CTM no. 011226552)

40
Technical terms audio branding, Audio Branding Academy, http://audio-branding-academy.org
/aba/knowledge/what-is-audio-branding/ [18.08.2015].
41
Id.

12
2. Brand Voices, Brand Songs, Soundscapes, Sound Design
Some companies use brand voices to provide their products or services with a distinct and
recognisable voice.42 Sometimes voices of actors, singers or other famous persons are used for
this purpose. The voice is expected to provide the product with a particular character or feeling
to distinguish it from others. HEXAL’s trade mark protected slogan Arzneimittel ihres
Vertrauens Hexal (Figure 9) provides a good but also controversial example of such a sound
mark.43

Arz neimittel ihres Vertrauens Hex a l

(text added)

Figure 9 Brand Voice of HEXAL (CTM no. 003699204)

Brand songs or commercial songs are another form of audio branding.44 They generally are used
in advertisements on television and radio or in cinemas. Contrary to jingles, audio logos and
sound icons, brand songs are longer in duration. An advertisement may consist fully or partially
of a brand song. Among the most famous commercial songs are Bacardi’s Summer Dreaming,
Coca-Cola’s Holidays are Coming! or Johnnie Walker’s The Skye Boat Song.
Soundscapes are less pervasive than commercial songs.45 They are employed by companies
at commercial fairs, on websites, in elevators or in the form of hold music for communication
devices. Sound grounds try to create an association between a product and a particular company.
In that regard, sound grounds can fulfil a similar function as a trade mark. A good example for a

42
Technical terms audio branding, Audio Branding Academy, http://audio-branding-academy.org
/aba/knowledge/what-is-audio-branding/ [18.08.2015].
43
See supra at 21 and 46.
44
Technical terms audio branding, Audio Branding Academy, http://audio-branding-academy.org
/aba/knowledge/what-is-audio-branding/ [18.08.2015].
45
Id.

13
successful soundscape is the boarding music of the UAE-based airline, Etihad, or Cisco’s default
hold music for its call manager.46 Both companies use music to create a unique atmosphere.
Finally, sound design deals with the acoustic features of products. Until recently, it has been
mainly relevant for tangible products, such as the noise of crisp packets, vacuum cleaners or car
and motorcycle engines.47 In an increasingly digital world, sound design is getting even more
relevant, particularly for inherently silent electronic goods and digital services. Cars are another
important area for sound design. As they become more and more computerised and powered by
silent electric engines, sound design has been increasingly used to create various car noises
reaching from the ticking noise of indicator lights to the roaring noise of engines.48

3. Conclusions
The examples of audio branding show that sound marks may take various forms. Most
obviously, they can take the form of jingles, audio logos or sound icons. Less clear seems the
case with regard to brand voices, commercial songs, sound grounds, and sound designs. Longer
music pieces in whatever form seem to be a copyright rather than a trade mark protection issue.
However, being considered an artistic work does not exclude a sound sign of performing the
function of sound mark and, if all legal requirements are met, benefiting from trade mark
protection.
As mentioned earlier, some studies on sound marks take a phenomenological approach,
discussing various forms of sound signs and their registrability as trade marks.49 However, the
concepts of jingles, audio logos and sound icons simply reflect audio branding or marketing
terminology. They denote only the potential use case for a sound sign but are of no legal purpose
or value. Subjecting this study’s investigation to marketing terminology would unnecessarily

46
Etihad Airways, Etihad Boarding Music, https://soundcloud.com/etihad-airways/etihad-boarding-music
or Cisco’s call manager default hold music, https://www.youtube.com/watch?v=6g4dkBF5anU
[18.08.2015].
47
See, e.g. H. Sutcliffe, Eco crisp packet is too noisy for consumers, 1 November 2010, The Guardian,
http://www.theguardian.com/sustainable-business/blog/eco-crisp-packet-too-noisy [18.08.2015].
48
See, e.g. Audi is working on the so called Audi e-sound to outfit its future e-tron car models powered
by electric motors. The noise should ensure that pedestrians will hear those cars in daily traffic. Audi
USA, Acoustic Innovation: e-sound by Audi, 9 April 2012, YouTube,
https://www.youtube.com/watch?v=HoEDLvQZg5I [18.08.2015].
49
See supra at 3.

14
limit the scope of potential sound signs that may perform the function of a trade mark. This study
aims at establishing the legal meaning of sound mark and assessing the registration practice in an
abstract and general way.

C. The Trade Mark: Protection Criteria

This chapter uses a foundation of international and EU legislation to address the notion of trade
mark. It sets the stage for a closer look at the trade mark within the context of the TM Directive
and CTM Regulation. Thus, this forms the basis for discussing the term sound mark within the
meaning of the CTM Regulation. Although this study examines the notions of sound mark with
regard to CTM protection, a substantial part of the research is based on settled CJEU case law
and the opinions of the CJEU’s Advocate Generals (AG), in particular, related to the
interpretation of the TM Directive. While the AG’s opinions are not binding, they nevertheless
provide valuable legal reasoning and guidance for the interpretation of EU legislation.

I. Basic Requirements for Attaining Trademark Status

1. International Legal Framework

The Paris Convention for the Protection of Industrial Property (Paris Convention) is the oldest
international treaty concerning the protection of intellectual property. 50 However, the Paris
Convention does not define trade mark; this is left to the members of the union.51 Nevertheless,
Article 6quinquies A para. 1 of the Convention already provides a first step towards harmonisation.
It calls for members to accept trade marks registered in another member state for filing and
protection. However, Article 6quinquies B of the Paris Convention also outlines those cases in
which a member of the union may deny trade mark protection. Those circumstances are reflected
in the absolute and relative grounds for refusal stated in the domestic trade mark legislation of
the members of the Paris Convention.

50
Paris Convention as amended on September 28, 1979 (Paris Convention). The first version dates back
to March 20, 1883. The convention was amended multiple times. The most recent revision dates back to
September 28, 1979.

15
 Article 6quinquies is also referred to as the telle-quelle principle.52 According to that principle, a
trade mark formally registered in one member country should be registered in the same form in
another country of the union. This principle essentially refers to the trade mark’s external
appearance.53

The Paris Convention is complemented by two important international treaties addressing the
international registration of trade marks:54 The Madrid Agreement (MA) and the Protocol
Relating to the Madrid Agreement Concerning the International Registration of Marks, the
Madrid Protocol (MP).55 Both treaties facilitate the international registration of trade marks.
Still, neither the MA nor the MP defines the notion of trade mark. The criteria for the
international registration of a trade mark is based on the trade mark definition of the country of
origin, i.e. where the basic registration took place.56
The first international treaty establishing a legal definition of trade mark at an international
level was TRIPS in 1994.57 It referred to trade mark as:58

Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark.
Such signs, in particular words including personal names, letters, numerals, figurative
elements and combinations of colours as well as any combination of such signs, shall be

52
This principle applies also to the members of the Madrid Agreement (MA) and the Madrid Protocol
(MP). The World Intellectual Property Organisation (WIPO) applies a much lenient approach to the
registration of sound marks than domestic legislations. It explains why sonograms could found in the
ROMARIN database, the international trade mark registry. Suter-Sieber, supra note 4, at 159.
53
In some countries this led in the past to paradox outcomes. While domestic legislation did not allow for
registering three-dimensional trade marks in Switzerland, such trade marks could still be registered in
Switzerland on the basis of the Madrid Agreement. Suter-Sieber, supra note 4, at 16.
54
Art. 19 of the Paris Convention.
55
MA and MP as amended on November 12, 2007; For more on their origins see also T. Prime, supra
note 53, at 80-82 (2000).
56
Art. 1 para. 2 and art. 5 para. 1 of the Madrid Agreement (MA); Art. 1 para. 1 and art. 5 para. 1 of the
Madrid Protocol (MP).
57
See supra at 33. For more on intellectual proprty and TRIPS see C. M. Correra & A.. A. Yusuf,
Intellectual Poperty and International Trade, The TRIPS Agreement (2008); A. Taubman et al., A
Handbook on the WTO TRIPS Agreement (2012).
58
Art. 15 para. 1 of TRIPS.

16
 eligible for registration as trademarks. Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make registrability depend on
distinctiveness acquired through use. Members may require, as a condition of registration, that
signs be visually perceptible.

According to TRIPS, any sign capable of distinguishing the goods or services of one undertaking
from those of another undertaking shall be capable of constituting a trade mark.59 In addition, as
stipulated in the definition, members may require a sign to be visually perceptible as a condition
for registration.60
The EU is not a member to the Paris Convention. It is, however, a member of the Madrid
Protocol as well as of the TRIPS agreement. Those treaties implicitly require EU legislation to
61
be consistent with the Paris Convention. With the EU’s 2004 ratification of the Madrid
Protocol, the CTM system and the Madrid system have been linked.62 This connection makes it
possible for CTM applicants to simultaneously file an international application with the OHIM.
Moreover, it allows an applicant outside of the EU to designate the EU in an international trade
mark application.
Interestingly, the telle-quelle principle derived from the Paris Convention would have
implicitly called upon the EU to register a sound mark for which application came via the
Madrid System, i.e. an international trade mark. However, as mentioned previously, while not
explicitly excluding sound marks from registration, the TRIPS agreement allowed members,
such as the EU, to require visual representation as registration criteria. This was the case for
registering sound signs as CTMs until 2005.63

59
Art. 15 para. 1 sent. 1 of TRIPS. This indicates that a sign’s capability of distinguishing goods or
services is the sole essential determinant of its suitability for registration and emphases the notion of
distinctiveness, see also Philips, supra note 15, at 86 (2003).
60
Art. 15 para. 1 sent. 4 of TRIPS.
61
Website of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), 13.2. What
does the link between the Madrid Protocol and the CTM system mean?
https://oami.europa.eu/ohimportal/en/madrid-protocol#13.2 [18.08.2015].
62
Id.
63
See supra at 31.

17
2. EU Trade Mark Legislation
The TM Directive and the CTM Regulation are the most important EU trade mark legislations.64
The former is directed at EU member states; it harmonises trade mark protection on the territory
of the EU.65 The latter establishes rules and conditions for granting a CTM. The TM Directive
and CTM Regulation share the same trade mark definition:66

A [Community] trade mark may consist of any signs capable of being represented graphically,
particularly words, including personal names, designs, letters, numerals, the shape of goods or
of their packaging, provided that such signs are capable of distinguishing the goods or services
of one undertaking from those of other undertakings. (emphasis added)

Sound is not explicitly mentioned as a sign, neither in the TM Directive nor in the CTM
Regulation. This does not mean that sound signs are excluded from trade mark protection. The
EU, however, required any sound sign to be registered as a trade mark in member states or as a
CTM to be capable of graphical representation.67 The word may in Article 2 of the TM Directive
and Article 4 in the CTM Regulation may not be interpreted that member states or OHIM had
discretion on whether or how to implement this provision. Rather, it refers to the concept of sign
as an open-ended term stipulating that if the necessary requirements are met a sign could qualify
as trade mark.68

64
European Parliament and Council Directive 2008/95/EC, OJ 2008 L 299/25 (TM Directive) and
Council Reg. 207/2009, OJ 2009 L 78/1(CTM Reg.). For more on the origins of EU trade mark law see
also T. Prime, European Intellectual Property Law, at 75-78 (2000).
65
For more on the harmonization of trade mark law in the EU see also A. Michaels & A. Norris, A
Practical Approach to Trade Mark Law, at 2-4 (2010).
66
Art. 2 of the TM Directive; Art. 4 of the CTM Reg.
67
The TM Directive was not intended to define trade mark. EU member states were supposed to
determine the signs of which a trade mark may consist themselves. Thereby, Art. 2 of the TM Directive
laid down certain requirements for a trade mark. Unsurprisingly, they refer to the function of a trade
mark. However, the requirements stipulated in the TM Directive were directed at creating a registration
system in which graphical representation would play a key role. Keeling, supra note 67, para. 2-028.
68
Keeling, supra note 67, para. 2-029.

18
3. Conclusions
The TRIPS agreement, the TM Directive and the CTM Regulation provide a minimalist trade
mark definition - a sign that is capable to distinguish goods or services from one undertaking
from those of another undertaking.69 As previously mentioned, the TRIPS agreement left it
optional for member countries to require graphical representation of a sign to qualify it as trade
mark. In some countries, such as the US, graphical representation was never a legal requirement,
The EU, however, opted for a trade mark definition that required graphical representation. This
led in the EU to some confusion on how to treat famous sound marks in the EU, such as the
Tarzan Yell or MGM’s Roar of a Lion, which already had trade mark registration in the US.70 In
that context, a variety of questions arose. What constitutes graphical representation? Do simple
onomatopoeias or sonograms (images that show how an acoustic signal varies over time) qualify
as graphical representation for sound marks? Would they allow for CTM registration?71
However, before addressing those questions, it is important to understand the notion of trade
mark within the understanding of the TM Directive and CTM Regulation.

II. Trade Mark within the Meaning of TM Directive/ CTM Regulation

What constitutes a trade mark within the meaning of Article 2 of the TM Directive and Article 4
of the CTM Regulation? This has been addressed by the CJEU in settled case law and by AGs in
their opinions.72 Among the most relevant cases regarding the definition of trade mark are the
Sieckmann case of 2002 and the Dyson case of 2007.73 In both cases, the CJEU provided
guidance on what would allow a sign to qualify as a trade mark according to EU legislation, i.e.
Article 2 of the TM Directive.

69
Art. 15 Para. 1 of TRIPS; Art. 4 of the CTM Reg.; C. Waelde et al., Contemporary Intellectual
Property, Law and Policy, at 577 (2011).
70
See infra at 31.
71
Id.
72
For more on the development of CJEU case law on trade marks see also A. Michaels & A. Norris, A
Practical Approach to Trade Mark Law, at 4-5 (2010).
73
Judgment of 12 December 2002 in Case 273/00, Ralf Sieckmann v Deutsches Patent- und Markenamt
(Sieckmann), [2002] ECR I-11737, at I-11737; Judgment of 25 January 2007 in Case 321/03, Dyson Ltd v
Registrar of Trade Marks (Dyson Ltd.), [2007] ECR I-00687, I 712-728.

19
 Still, legal scholars and practitioners have criticised the CJEU’s approach in defining the
notion of trade mark in settled case law.74 According to them, the CJEU has identified those
functions that provide the basis for a sign to qualify as a trade mark.75 However, it has so far
fallen short of providing a full characterisation of those functions.76 As a consequence, this study
draws especially on the opinions provided by two AGs in order to obtain a deeper understanding
of the functions that a trade mark performs according to the TM Directive and the CMT
Regulation. Both AG Dámaso Ruiz-Jarabo Colomer and AG Georges Cosmas provide additional
insights on the legal concepts that the CJEU established and used in those two landmark cases.
Sieckmann provides the starting point for establishing the functions performed by a trade
mark. This case concerned the registrability of an olfactory sign (smell). The CJEU referred in
its judgment to three necessary capabilities of a sign to be able to perform the function of a trade
mark:77
 A sign has to be capable to function as indication of origin.78
 A sign has to be capable to distinguish between goods and services of one undertaking
from those of another undertaking.79
 As sign has to be capable to be represented graphically.80

In its decision, the CJEU elaborated only very briefly on the first two capabilities. Given the
subject matter, the CJEU focused especially on the third capability, justifying the necessity for
graphical representation. The following three chapters will elaborate on those three capabilities
based on the opinions of the AGs and additional settled case law of the CJEU, such as
Windsurfing Chiemsee, Dyson, Libertel, Canon, and Merz & Krell & Co.81

74
Keeling, supra note 67, para. 2-009.
75
Id.
76
Id.
77
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, at I-11739.
78
Case 273/00, Sieckmann, in particular Rec. 34 and 53 of the judgment.
79
Id., in particular Rec. 35 and 39 of the judgment.
80
Id., in particular Rec. 39 of the judgment.
81
See judgment of the Court of 4 May 1999 in Joined Cases 108/97 and 109/97 Windsurfing Chiemsee
(Windsurfing Chiemsee) [1999] ECR I-2779, at I-2779, judgment of 25 January 2007 in Case 321/03,
Dyson Ltd v Registrar of Trade Marks (Dyson), [2007] ECR I-00687, I 712-728, Judgment of 6 May
2003 in Case 104/01, Libertel Groep BV v Benelux-Merkenburea (Libertel), [2003] ECR I-03793,
Judgment of the Court of 29 September 1998 in Case 39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-

20
1. Capability of a Sign to Function as an Indication of Origin
The need for a sign to function as an indication of origin can be found in the TM Directive as
well as in the CTM Regulation. Both legislations refer to it in their recitals:82

The protection afforded by the registered trade mark [or CTM], the function of which is in
particular to guarantee the trade mark as an indication of origin, should be absolute in the case
of identity between the mark and the sign and the goods or services. […] (emphasis added)

According to AG Ruiz-Jarabo Colomer the notion of indication of origin has its roots in the
dialogue that a trade mark establishes between a manufacturer and a consumer.83 From an
abstract point of view, a trade mark boils down to a means of communication which allows a
trade mark owner to raise awareness and provide consumers with information on his products.84
Communication refers to one person imparting something that he knows to another person.85 In
that sense, every act of communication requires a sender sending a message, a message
expressed in a code which can be read by the recipient, a channel for transmission, and a
recipient receiving the message. 86 The latter has to be able to decipher or decode the message as
well as to comprehend and assimilate the content of message.87 In that regard, humans as
recipients possess a variety of sensors that allow them to receive messages and to decode them.88
Applied to trade marks this means that a consumer can perceive trade marks as varied as the
senses at his disposal.89

Mayer Inc., formerly Pathe Communications Corporation (Canon) [1998] ECR I-5507, Judgment of the
Court of 4 October 2001 in Case 517/99, Merz & Krell GmbH & Co., Reference for a preliminary ruling:
Bundespatentgericht – Germany (Merz & Krell & Co.) [2001] ECR I-6959.
82
See Rec. 11 of the TM Directive and Rec. 8 of the CTM Reg..
83
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 19.
84
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 19.
85
See S. Maniatis, Sent as Trademarks: Propertisation of Scents and Olfactory Property, Law and The
Senses, at 217-235 (1996).
86
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 20.
87
Id.
88
Id.
89
Id., Rec. 21.

21
 Finally, as a means of communication, a endows a particular product with its reputation, i.e.
the trade mark’s reputation.90 In that context, the trade mark performs two functions for the
consumer:91
 Identifying the origin of a good or service
 Indicating the quality of a good or service

a) Identifying the origin of a good or service

Enabling the consumer to identify the origin of a good or service is considered by AG Ruiz-
Jarabo Colomer an essential function of a trade mark. 92 It is a function that has been postulated
by the CJEU in multiple cases, in particular, in Windsurfing Chiemsee, Canon and Merz & Krell
& Co.93 AG Cosmas specified in Windsurfing Chiemsee, that identifying the origin of a good or
service refers to:94
 Identifying an undertaking’s product and distinguishing that product from other similar
products (distinguishing function of a trade mark)
 Establishing a link between those products and a particular undertaking (guarantee of
origin)

With regard to the distinguishing function of a trade mark AG Ruiz-Jarabo Colomer held that
this function does not simply rest on linking a certain product with a particular undertaking.95

90
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 19.
91
Keeling, supra note 67, para. 2-010.
92
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 19;
Some legal scholars refer here to a sign’s capability of individualizing goods or services. F. Thouvenin et
al., Repetitorium Immaterialgüterrecht, at 154 (2010).
93
See Judgment of the Court of 29 September 1998 in Case 39/97, Canon Kabushiki Kaisha v Metro-
Goldwyn-Mayer Inc., formerly Pathe Communications Corporation (Canon) [1998] ECR I-5507, at I-
5507, Judgment of the Court of 4 October 2001 in Case 517/99, Merz & Krell GmbH & Co., Reference
for a preliminary ruling: Bundespatentgericht – Germany (Merz & Krell & Co.) [2001] ECR I-6959, at I-
6959, Judgment of the Court of 4 May 1999 in Joined Cases 108/97 and 109/97 Windsurfing Chiemsee
(Windsurfing Chiemsee) [1999] ECR I-2779, at I-2779; Keeling, supra note 67, para. 2-013.
94
Advocate General Georges Cosmas in Joined Cases 108/97 and 109/97 Windsurfing Chiemsee
(Windsurfing Chiemsee) [1999] ECR I-2779, para. 27.
95
Id.

22
According to him, a consumer should simply be aware that products bearing the same trade mark
originate from the same source regardless of knowing the manufacturer’s identity.96

b) Indicating the quality of a good or service

In addition to indicating origin, a trade mark should also indicate quality.97 According to the
CJEU, it is an essential function as undertakings should be in a position to keep their customers
by virtue of the quality of their products.98 The trade mark system should provide an incentive
for undertakings to invest in improving their goods and services. This reflects the public policy
objectives of the trade mark system. Trade marks are intended to protect consumers from being
misled as to the origin or quality of a product or service.99 The trade mark system is additionally
intended to serve as an incentive for businesses or individuals to maintain and improve the
quality of their products.100

2. Capability of a Sign to Distinguish

The requirement for a sign to be able to distinguish between products of one undertaking from
those of another undertaking is stipulated in the TM Directive and in the CTM Regulation:101

[…] signs which may constitute a trade mark, provided that such signs are capable of
distinguishing the goods or services of one undertaking from those of other undertakings. […]
(emphasis added) 102

[…] trade marks enabling the products and services of undertakings to be distinguished by
identical means throughout the entire Community, regardless of frontiers, should feature

96
Advocate General Georges Cosmas in Joined Cases 108/97 and 109/97 Windsurfing Chiemsee
(Windsurfing Chiemsee) [1999] ECR I-2779, para. 27.
97
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 19;
Keeling, supra note 67, para. 2-015.
98
Judgment of the Court of 17 October 1990 in Case 10/89 SA CNL-SUCAL NV v HAG GF AG,
Reference for a preliminary ruling: Bundesgerichtshof - Germany. (HAG GF AG) [1990] ECR I-3711,
para. 13; Case 517/99, Merz & Krell & Co., in particular Rec. 21 of the judgment.
99
Waelde et al., see infra note, at 547.
100
Id.
101
TM Directive and CTM Reg..
102
See Rec. 8 of the TM Directive.

23
 amongst the legal instruments which undertakings have at their disposal. […] (emphasis
added) 103

As seen previously, AG Cosmas specified that identification of the origin of a product consists of
identifying and distinguishing a product of one undertaking from the products of another
undertaking.104 In other words, trade marks should enable consumers to distinguish goods and
services by their origin.105
The CJEU has elaborated on the capability to distinguish in Dyson.106 A sign must be
specific in order to distinguish products from one undertaking from those of another
undertaking.107 As a consequence, products with signs that are merely descriptive or decorative
108
do not qualify as distinguishing. The capability of a sign to distinguish has to be assessed by
reference to the product it is intended designate.109 A sign that cannot distinguish will be refused
registration as a trade mark.110 However, it is important to remember that a prerequisite to
distinguishing is the capability of a sign to establish a dialogue between a manufacturer and a
consumer.111 It follows that only signs humans perceive as exhibiting an indicator of origin can
serve as trade marks.112

3. Capability of a Sign to be Represented Graphically

The TM Directive and the CTM Regulation stipulate that a sign has to be capable of graphical
representation to qualify as a trade mark:113

103
See Rec. 2 of the CTM Reg..
104
See supra note 94.
105
Keeling, supra note 67, para. 2-022.
106
Judgment of 25 January 2007 in Case 321/03, Dyson Ltd v Registrar of Trade Marks (Dyson Ltd.),
[2007] ECR I-00687, I 712-728.
107
Case 321/03, Dyson Ltd, in particular Rec. 36 of the judgment; Waelde et al., supra note 69, at 580;
Keeling, supra note 67, para. 2-045.
108
Id.
109
Id.
110
See infra, at 34.
111
See supra notes 83 and 84.
112
Others refer to this as an instinctive reaction to trade marks, such as Keeling supra note 67: […] You
know a trade mark when you see [experience] one […].
113
See Art. 2 of the TM Directive and Art. 4 of the CTM Reg..

24
 A [Community] trade mark may consist of any signs capable of being represented graphically,
particularly words, including personal names, designs, letters, numerals, the shape of goods or
of their packaging, provided that such signs are capable of distinguishing the goods or services
of one undertaking from those of other undertakings. (emphasis added)

According to AG Ruiz-Jarabo Colomer, the reason for graphical representation can be found in
114
the public nature of the trade mark register. This registry grants a trade mark owner a
monopoly and exclusive right over his trade mark:115

[…] it must be possible to know, to the full extent of the public nature of registers, the nature
and scope of the signs, references and symbols registered as a trade mark, which is why a
graphical representation is required.

For Colomer, graphical representation relates to a trade mark’s function as indicator of origin.116
On the one hand, a trade mark possesses an intrinsic identification capability.117 On the other
hand, a trade mark refers to a sign that can be described by means of symbols that can be drawn
on paper.118 The CJEU followed his approach in Sieckmann by stating that a trade mark which is
not in itself capable of being perceived visually complies with Article 2 of the TM Directive
provided that:119

[…] it can be represented graphically, particularly by means of images, lines or characters, and
that the representation is clear, precise, self-contained, easily accessible, intelligible, durable
and objective.

Those criteria are generally referred to as the Sieckmann Seven.120 Some of the concepts that
make up these criteria include self-contained, durable and objective. These properties were

114
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 36;
Keeling, supra note 67, para. 2-051.
115
Id.
116
Id.; Keeling, supra note 67, para. 2-051.
117
Id.
118
Id.
119
Case 273/00, Sieckmann, in particular Rec. 55 of the judgment.
120
Id., in particular Rec. 35 of the judgment; Waelde et al., supra note 69, at 581.

25
closely related to the olfactory sign for which trade mark protection was sought in Sieckmann.121
Those criteria guarantee that the trade mark on which a right of exclusivity is claimed becomes
immediately clear.122 Moreover, they guarantee that registered trade marks are intelligible;
thereby helping interested consumers and undertakings when investigating the trade mark
register.123 Those criteria have been reaffirmed by the CJEU in other cases involving non-
traditional trade marks, such as in Libertel.124

4. Conclusions
To summarise, a trade mark in the meaning of the TM Directive and the CTM Regulation refers
to a sign that is:
 Capable of functioning as indication of origin
 Capable of distinguishing products from one undertaking from those of other
undertakings
 Capable of being represented graphically

Capable of functioning as indication of origin: It is important to note that in order to function as

an indication of origin as sign has to be capable, first, of identifying an undertaking’s product
and to distinguish that product from other similar products (distinguishing function of a trade
mark) and, second, to indicate the quality of that product. Moreover, in order to function as an
indication of origin, a sign has to be able to endow a product with its reputation, which requires a
sign to work as a means of communication.
Capable of distinguishing: The capability to distinguish overlaps with the capability to function
as an indication of origin. However, as a capability in its own right, it refers to a trade mark’s
fundamental purpose, namely, to enable consumers to distinguish products based on their
origins. The capability of a sign to distinguish can only be determined in relation to the product it

121
In respect of the olfactory sign, the CJEU considered the requirements of graphic representability not
satisfied, neither by providing a chemical formula, by a description in written words, by the deposit of an
odour sample or by a combination of those elements. See supra note 73.
122
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 38;
Keeling, supra note 67, para. 2-054.
123
Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739, Rec. 38;
For more on graphical representability see also C. Seville, supra note 350, at 226 (2009).
124
Case 104/01, Libertel, in particular Rec. 29 of the judgement.

26
designates. In order to be capable of distinguishing, a sign has to establish a dialogue between
consumers and manufacturers.
Capability to be represented graphically: Finally, the capability to be represented graphically
requires a sign to be represented according to the Sieckmann Seven criteria. This means a sign
complies with graphical representation if it can be drawn […] by means of images, lines or
characters, and that the representation is clear, precise, self-contained, easily accessible,
intelligible, durable and objective.125
Those three factors are essential for a sign to perform the function of a trade mark. However,
they all rest implicitly on the fundamental capability of a sign to function as a means of
communication and its capability to establish a dialogue between manufacturers and consumers.
Given its implicit nature, this quasi fourth factor can be considered the first condition for a sign
to qualify as a trade mark.

III. The Sound Mark within the Meaning of the CTM Regulation
What constitutes a sound mark within the meaning of Article 4 of the CTM Regulation? Can a
sound sign serve as a CTM at all? What kind of sound signs can serve as CTMs? According to
the notion of trade mark in the meaning of Article 2 of the TM Directive and Article 4 of the
CTM Regulation, the notion of trade mark is open to any sign that complies with the three
essential requirements, outlined in the previous chapter. A sound sign that complies with those
requirements is able to perform the function of a trade mark in the EU and, thus, qualifies for
registration with OHIM. In fact, clarifying the notion of sound mark within the meaning of the
TM Directive and the CTM Regulation took place in basically two steps.

1. The CJEU on Sound Marks

That sound signs can qualify as trade marks has been upheld by the CJEU and the AGs
implicitly in Sieckmann and later explicitly in Shield Mark.126 In the latter case, the CJEU had to
answer if Article 2 of the TM Directive has to be interpreted as precluding sounds or noises from
being regarded as trade marks.127 The CJEU held that it is clear from Article 2 of the TM

125
Case 273/00, Sieckmann, in particular Rec. 55 of the judgment.
126
Judgment of 27 November 2003 in Case 283/01, Shield Mark BV and Joost Kist h.o.d.n. Memex
(Shield Mark), [2003] ECR I-14329.
127
Case 283/01, Shield Mark, in particular Rec. 26 of the judgment.

27
Directive and the seventh recital in the preamble, that the list of signs in Article 2 of the TM
Directive does not, expressively exclude sound signs.128 In that regard the CJEU reaffirmed its
statement in Sieckmann, in which the court stated that Article 2 of the TM Directive does not
exclude signs of qualifying as trade marks that are not visually perceivable.129 However, such
signs fall with Article 2 of the TM Directive only if they comply with the Sieckmann Seven
criteria, which means they can be […] represented graphically, particularly by means of images,
lines or characters, and that the representation is clear, precise, self-contained, easily
accessible, intelligible, durable and objective. 130 However, this left many open questions with
regard to sound marks. Would the use of simple onomatopoeia qualify as a graphical
representation of a sound sign? Would sonograms comply with graphical representation, given
that not all sound signs can be represented by musical notation?
The CJEU addressed those issues in Shield Mark. Thereby, it further clarified the notion of
sound mark within the meaning of the TM Directive and, eventually, provided valuable guidance
for sound marks in the context of the CTM Regulation. In Shield Mark, the CJEU applied the
Sieckmann Seven on sound signs. It established the conditions that a sound sign in terms of
graphical representation must meet in order to qualify potentially as a trade mark.131 The CJEU
reaffirmed the general requirements outlined in Sieckmann for graphical representation.132
According to the CJEU, graphical representation is satisfied where the sound sign is represented
by “[…] a stave divided into measures and showing, in particular, a clef, musical notes and
rests, whose form indicates the relative value and, where necessary, accidentals”.133 Put in
simple terms, a sound sign that can be graphically represented using musical notation qualifies as
a sign in the meaning of Article 2 of the TM Directive.
Defining graphical representation for sound signs on the basis of musical notation limited the
scope of sound signs to sounds with a discrete frequency spectrum which can be categorised
according to a particular tone’s pitch.134 In other words, this definition limited the scope of sound

128
Shield Mark Rec. 35 and cf. supra at 20.
129
Case 273/00, Sieckmann, in particular Rec. 44 of the judgment
130
Id., in particular Rec. 55 of the judgment and cf. supra at 23.
131
See Case 283/01, Shield Mark, in particular Rec. 64 of the judgment.
132
Id.; Keeling, supra note 67, para. 2-060; C. Seville, EU Intellectual Property Law and Policy, at 228-
230 (2009).
133
Case 283/01, Shield Mark, in particular Rec. 64 of the judgment.
134
Cf. supra at 7.

28
signs to sounds that humans perceive as music.135 This left aside sounds with an irregular
frequency spectrum, otherwise known as noises.136 The CJEU opted for musical notation for the
sake of providing the […] competent authorities and the public, in particular traders, to know
precisely the sign whose registration as a trade mark is sought.137 However, it is important to
acknowledge that musical notation does not account for timbre.138 While musical notation
represents aurally perceived music through the use of written symbols, it fails to provide for an
impression of how a piece of music would sound in reality. 139 A piece of music played with a
trombone would sound very different from the same piece played with a transverse flute.140

2. Change in Registration Practice: Sonograms and Sound Files

The fact that noises are considered outside the scope of sound signs in the meaning of the TM
Directive has also had repercussions for CTMs. In 1999 Metro-Goldwyn-Mayer (MGM)
submitted an application to have their famous Roar of a Lion registered as a CTM in the EU.141
Given that a roar of a lion could not be graphically represented by musical notation, MGM
submitted to the OHIM a sonogram, an image that shows how an acoustic signal varies over
time, together with a description of the sound.142 MGM’s application was dismissed by the first
instance and again in 2003 in the case Roar of a Lion by the Fourth Board of Appeal due to
insufficient graphical representation of the trademark.143 The OHIM denied registration a sound
marks for which graphical representation was submitted in the form of sonograms.144 According
to the OHIM they would not meet the criterion of being self-contained. 145 This meant that a third
party examining the CTM register would neither be able to reproduce such a graphically

135
Cf. supra at 7.
136
Id.
137
See Case 283/01, Shield Mark, in particular Rec. 64 of the judgment.
138
Cf. supra at 7.
139
Id.
140
Id.
141
See OHIM Dec. of the Fourth Board of Appeal of 25 August 2003 in Case R 781/1999-4, Sound Mark
(Roar of a Lion).
142
Id.
143
Case R 781/1999-4, Sound Mark (Roar of a Lion), in particular Rec. 20 of the judgement.
144
Id.
145
Id.

29
represented sound sign nor gain a general idea of it.146 A surprising exemption to the OHIM’s
practice in Roar of a Lion and later Tarzan Yell is the case of HEXAL, in 2005.147 Here, the
OHIM’s Fourth Board of Appeal decided to grant trade mark protection to a sound sign on the
basis of a sonogram. The board of appeal held that the arguments put forward against the
permissibility of sonograms were unconvincing and that […] it is possible to learn how to
understand sonograms, just as one can learn how to understand foreign languages or musical
notation.148 It seems the board of appeal took the new rules governing the registration practice
for CTMs, adopted two months earlier, as reason for broadening the acceptable forms of
graphical representation. In July of that year, the CTMI Regulation that stipulated the rules for
registration of CTMs was amended. Rule three paragraph six was replaced by the following
paragraph:

Where registration of a sound mark is applied for, the representation of the trade mark shall
consist of a graphical representation of the sound, in particular a musical notation; where the
application is filed through electronic means, it may be accompanied by an electronic file
containing the sound. The President of the Office shall determine the formats and maximum
size of the electronic file.

However, despite the decision in HEXAL, sonograms remained a contested issue.149 In 2006,
Edgar Rice Burroughs, Inc. was denied CTM registration for its famous Tarzan Yell on the basis
that sonograms do not sufficiently qualify as graphical representation.150 The Fourth Board of
Appeal held that […] nobody would be able to hum the Tarzan yell from the spectrogram
[sonogram] filed by the applicant in the present case and nobody reads spectrograms

146
Case R 781/1999-4, Sound Mark (Roar of a Lion), in particular Rec. 20 of the judgement; Case R
708/2006-4, Tarzan Yell, in particular Rec. 20 of the judgment.
147
OHIM Dec. of the Fourth Board of Appeal of 27 September 2007 in Case R 295/2005-4, Sound Mark
(HEXAL).
148
Id.
149
See G. Humphreys, Non-Conventional Trademarks: An Overview of Some of the Leading Case Law of
the Boards of Appeal, 31 EIPR 9, at 437-448 (2010).
150
OHIM Dec. of the Fourth Board of Appeal of 27 September 2007 in Case R 708/2006-4, Tarzan Yell,
(Tarzan Yell), in particular Rec. 47 of the judgment; for more substantial discussion of the case see S.
Yavorsky, Ministry of Sound - OHIM and the Tarzan Yell, 19 EntLR 3, at 63-65 (2008).

30
[sonogram] for entertainment.151 However, the board of appeal added that particularly with
regard to sounds other than music, the amendment to the CTMI Regulation has provided the
basis for filing sound files together with a graphical representation.152 They continued to
postulate that […] [s]uch sound files do fulfil the requirements of being easily accessible and
self-contained, as the Office publishes the sound file in electronic format and the reader of the
CTM Bulletin will then be able to hear the sound.153 Nevertheless, the requirement of graphical
representation, i.e. the acceptance or rejections of sonograms, seemed to remain an unclear issue
for sound mark applicants. In response to the lack of clarity, in 2007 the OHIM published a press
release. It expressed that since the amendments to the CTMI Regulation in 2005, the OHIM was
therefore […] able to accept sonograms provided they are accompanied, at the time of the filing,
by an MP3 sound file.154 Eventually, this paved the way for the registration of MGM’s Roar of a
Lion in 2008 and cleared the way for the CTM registration of many new sound marks in the
EU.155

3. Conclusions
With regard to the first research question, how has the notion of sound mark as a legal concept
changed from the past to today, we can conclude that defining graphical representation for sound
signs on the basis of sonograms and MP3 sound files substantially increased the breadth of
sound marks in the meaning of Article 4 of the CTM Regulation. It made it possible to register
melodies as well as noises.156 Considering the fact that musical notation has its own deficiencies,
i.e. its inability to capture timbre, this new OHIM registration practice is thought to have
enhanced legal certainty, regardless of the particular sound sign at hand.

151
Case R 708/2006-4, Tarzan Yell, in particular Rec. 45 of the judgment.
152
Id.
153
Id.
154
Tarzan’s trade mark yell, Press Release CP/07/01, Website of the Office for Harmonisation in the
Internal Market (Trade Marks and Designs), http://oami.europa.eu/en/office/press/pdf/051107.pdf
[18.08.2015].
155
See CTM 005170113 and other sound marks online accessible on the OHIM’s databases, see supra at
6.
156
Interestingly, only a couple of years ago some deemed noises anyway unlikely to serve as indicators of
origin for goods or services. See Sandri & Rizzo, supra note 24, at 145 (2003).

31
IV. The Sound Mark in Other Jurisdictions

1. Switzerland
In Switzerland, trade marks are governed by the Federal Act on the Protection of Trade Marks
and Indications of Source, (Trade Mark Protection Act, TmPA).157 Article 1 of the TmPA
defines a trade mark as follows:158

1 A trade mark is a sign capable of distinguishing the goods or services of one undertaking
from those of other undertakings.
2 Trade marks may, in particular, be words, letters, numerals, figurative representations, three-
dimensional shapes or combinations of such elements with each other or with colours.

In 2009, the Federal Supreme Court of Switzerland (Bundesgericht, BGER) in Melodie mit
sieben Tönen paved the way for sound marks absent of textual elements to be registered.159 Until
then, the Swiss Federal Institute of Intellectual Property (Eidgenössisches Institut für Geistiges
Eigentum, IGE) employed a rather inconsistent practice with regard to the registration of sound
marks. Sound marks were registered with or without textual elements as well as without having
acquired secondary meaning.160 The decision by the Supreme Court led the IGE to revise its
registration practice for sound marks.
Unlike with the CTM in the EU, registration of a sound mark in Switzerland still requires
graphical representation. However, according to Article 10(1) of the Ordinance on the Protection
of Trademarks (OPTm) the IGE can allow other electronic forms of representation.161 The
Supreme Court decision is considered to have given impetus to the registration of sound marks

157
Bundesgesetz über den Schutz von Marken und Herkunftsangaben vom 28. August 1992
(Markenschutzgesetz, SR 232.11), Federal Act on the Protection of Trade Marks and Indications of
Source, Trade Mark Protection Act (TmPA).
158
Id.
159
BGE vom 7. April 2009, 4A_566/2008 X. KG gegen Eidgenössisches Institut (IGE), BGE 135 III 359
E. 3.2, Melodie mit sieben Tönen; Bundi, supra note 9.
160
Bundi, supra note 9.
161
Verordnung über den Schutz von Marken und Herkunftsangaben (MSchV, SR 232.111), Ordinance on
the Protection of Trademarks (OPTm). Some legal scholars in Switzerland argue that graphical
representation should not be considered a protection criterion for trade marks according to TmPA. See
Suter-Sieber, supra note 23, at 120 and 157.

32
in Switzerland.162 Of the currently thirty-four registered sound marks, twenty-two obtained
registration in the past six years.163 It can be concluded that currently the scope of sound signs
eligible for registration in Switzerland is similar if not identical to the scope applied for CTMs in
the EU. While different melodies have been registered, the registration of noises as sound marks
in Switzerland appears to be only a matter of time.164

2. United States
In the US, trade marks are governed by the Trademark Act of 1946 (Lanham Act).165 It defines
trade mark as follows:166

The term “trademark” includes any word, name, symbol, or device, or any combination
thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the
principal register established by this chapter, to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown.

The US differentiates between trade marks and service marks. 167 The former are signs used to
distinguish products of different undertakings.168 The latter are signs used to distinguish services
of different undertakings. The word McDonald’s, for example, is registered as a service mark for
restaurant services. The word Nike, however, is registered as a trademark for footwear and

162
Bundi, supra note 9.
163
As of November 24, 2015.
164
See Suter-Sieber, supra note 23, at 157.
165
Code of Laws of the United States of America 15 USC § 1051 et seq. Trademark Act of 1946 as
amended (Lanham Trademark Act); B. W. Pattishall et al., Trademarks and Unfair Competition, at 90
(2002); This study relies on a common form of citing statutes in the US, which is by referring to the U.S.
code title (15) and the relevant paragraph (e.g. § 1127). For an introduction into US intellectual property
law see D. Hunter, The Oxford Introductions to U.S. Law (2012) or Halpern et al., Fundamentals of
United States Intellectual Property Law, Copyright, Patent, and Trademarks (2012)
166
15 USC § 1127.
167
Id.
168
Pattishall et al., supra note 165, at 100.

33
clothing products. Depending on the use of a trade mark, it might be necessary for a company to
have a word which was originally registered as a service mark to be re-registered as a trade
mark. A change of this nature would be caused by its use changing from designating services to
designating products.169 In reality, many companies end up having both marks, for example
Google. Service marks are registered the same way as trade marks; therefore, for the sake of
simplicity, this study will refer to both of them synonymously as trade marks.170
The registration process in the US, however, differs significantly from the EU and
Switzerland on one point. It has two separate registers for the registration of trade marks.171
While the Principal Register is widely known, the Supplemental Register is somewhat more
obscure. The former is open to trade marks that are distinctive by virtue of either their unique
characteristics or their long and exclusive use.172 The latter provides the opportunity to register
trade marks that are not considered distinctive at the time of registration but are expected to
become distinctive.173 This is generally expected to take place over a period of five years, a
process referred to in the US as acquiring second meaning. It will be discussed later with regard
to non-distinctiveness as an absolute ground of refusal.174
The US has as a much longer and broader experience with sound marks than the EU or
Switzerland.175 The case In re General Electric Broadcasting Company, Inc. is considered a

169
When a trade mark or service mark is federally registered with the USPTO, the owner of the trade
mark may use the registered trade mark symbol, often referred to as the registration symbol, ®. Trade
mark or service mark that are not federally registered use the trade mark symbols ™ and ℠ respectively.
170
Service marks are subject to the same provisions relating to the registration of trademarks, 15 USC §
1053; Website of the USPTO, https://www.uspto.gov [20.10.2015].
171
15 USC §§ 1051 to 1072 (Principal Register) and §§ 1091 to 1096 (Supplemental Register); Pattishall
et al., supra note 165, at 100-104.
172
15 USC § 1052(f).
173
Pattishall et al., supra note 165, at 103.
174
See infra at 45.
175
For examples of US sound marks see: Trademark "Sound Mark" Examples, The United States Patent
and Trademark Office (USPTO)http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-
examples [18.08.2015] and see § 807.09 of the Trademark Manual of Examining Procedure (TEMP)
concerning the requirements for submitting applications for sound marks in the US and §904.03(f)
regarding specimens for sound marks. See also R. P. Merges et al, “Intellectual property in the new
technological age” Wolters Kluwer Law & Business (2010).

34
landmark case for sound marks in the US, paving the way for the registration of sound marks.176
Contrary to the EU and Switzerland, graphical representation of a sound sign was never a
requirement for registration. The USPTO accepts written descriptions or specimens, such as
audio cassettes and compact disks.177 Such specimens should contain a sufficient portion of the
audio content to indicate the nature of the sound.178 It is also possible to submit musical notation
if the trade mark comprises music or words set to music.179 Thus, the Tarzan Yell or MGM’s
Roar of a Lion were already registered in the US for quite some time before they were registered
in the EU. It can be concluded that the scope of sound signs eligible for registration in the US is
identical to the scope with regard to the CTM in the EU. However, contrary to the EU, the US
has a much longer experience with the registration of sound marks.

D. Grounds for Refusal: The EU in Comparison to Switzerland and the US

Having established that all kinds of sound signs may qualify as sound marks in the context of the
CTM Regulation, it is apt to address the grounds for refusal of a CTM. These are relevant as they
relate to the second research question on how the OHIM conceptualise the notions of
descriptiveness and non-distinctiveness which are important absolute grounds for refusal. The
CTM Regulation, and trade mark legislation in general, stipulates grounds on which an
application for registration of a trade mark can be refused.180 Two categories of grounds for
refusal exist. Absolute grounds for refusal relate to the intrinsic qualities of a sign; those reasons
are listed in Article 7 of the CTM Regulation. Relative grounds for refusal address conflicts
between already registered trade marks and similar signs for which registration is sought; those
grounds are listed in Article 8 of the CTM Regulation.
This study will examine the OHIM’s practice of applying grounds for refusal on sound
marks. The focus will be on absolute grounds for refusal. Relative grounds for refusal will only
be briefly addressed. A full examination would go beyond the scope of this study. With regard to

176
Ahuja, see supra note 24, at 576; In re General Electric Broadcasting Company, Inc., 199 USPQ 560
(TTAB 1978).
177
Id.
178
Id.
179
Id.
180
For a concise overview on the application procedure for a CTM see also A. Michaels & A. Norris, A
Practical Approach to Trade Mark Law, at 93-98 (2010); Seville, supra note 350, at 233-269 (2009).

35
CTMs, no application for a sound mark has yet been opposed by a third party claiming prior
right to a trade mark.181 The examination of the OHIM’s practice of applying the absolute
grounds for refusal will be complemented by addressing the same practice in two other
jurisdictions, Switzerland and the US. The overall aim is to better understand the circumstances
under which a sound sign is denied registration as a CTM in the EU and also to gain insights
from the practices in the other two jurisdictions.

I. Absolute Grounds for Refusal

Of the grounds for refusal, Article 7(1)(b), (c) and (d) are concerned with aspects of
distinctiveness. This is confirmed by the fact that if one of these grounds is established, it can be
overcome by showing that a sign has, through use, become distinctive on the basis of Article
7(3).182 Those three grounds prevent registration of marks which are non-distinctive, descriptive
or generic, unless a sign has acquired distinctiveness through use.183
The OHIM has guidelines for the examination of absolute grounds for refusal.184 Those
guidelines provide assistance particularly for well-established visual trade marks and some non-
traditional trade marks, such as shapes and colours. However, they lack substance when it comes
to sound marks.185 For that reason, this study will examine OHIM’s practice with regard the
application of absolute grounds for refusal.186 It will do so in a descriptive way while focusing
on the arguments brought forth by OHIM through its decisions that declined registration of a
sound mark. This lays the ground for examining OHIM’s practice with regard to the settled case
law on grounds for refusal; however, an in depth examination would go beyond the scope of this

181
As of October 28, 2015.
182
Keeling, supra note 67, para. 8‐010.
183
Id.
184
Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and
Designs) on Community Trade Marks, Part B, Examination, Section 4, Absolute Grounds
for Refusal (OHIM Examination Guidelines), Website of the Office for Harmonisation in the Internal
Market (Trade Marks and Designs), https://oami.europa.eu/tunnel-
web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Guidelines/05_part_b_examination
_section_4_absolute_grounds_for_refusal_en.pdf [18.08.2015].
185
Id.
186
For a general overview and discussion of the absolute grounds for refusal see Seville, supra note 350,
at 233-253 (2009).

36
study.187 Consequently, the outcome of the examinations of this study are primarily beneficial
for applicants seeking CTM registration for the sound sign.
Among the absolute grounds for refusal, only those considered most closely related to the
capabilities of a sign to function as an indication of origin will be addressed by this author,
encapsulated by Articles 7(1)(a) to (d). In addition to those Articles, this study will address
Article 7(3) which provides the basis to overcome the grounds for refusal stipulated in Article
7(1)(b), (c) and (d) on the basis of demonstrating acquired distinctiveness. This study will
address those grounds for refusal partially in a reversed order. It will start with Article 7(1)(a).
This will then be followed by Article 7(3), Article 7(1)(d), Article 7(1)(c) and, finally, Article
7(1)(b). The underlying reasoning behind this is that an objection based on Article 7(1)(a)
cannot, contrary to the others, be remedied by acquiring distinctiveness. The remaining articles
are tackled according to the concreteness with regard to the subject matter they refer to.
Finally, it is important to acknowledge that Article 7(1) CTMR is a European provision.
According to the OHIM, it has to be interpreted on the basis of a common European standard. 188
It would be wrong to apply different standards of distinctiveness or different standards on the
breach of public order and morality that are based on varying national traditions.189 According to
Article 7(2), CTM registration can be refused if a trade mark is considered descriptive or to lack
distinctive character in one of the member states.190 For sound marks, this means that sound
signs which, based on their sematic meaning, would come under one of the grounds for refusal in
one or more member states, would be refused registration as CTM.

1. Article 7 (1) (a) CTM Regulation: Non-conforming with Article 4

Article 7(1)(a) of the CTM Regulation is a cross-reference to Article 4. It means that a sign must
qualify as a trade mark before it can be registered.191 The sign must be (i) represented
graphically and must be (ii) capable of distinguishing the goods or services it designates from
those of other undertakings.192

187
For an excellent overview on settled case law in the EU, see Keeling, supra note 67, para.8-001-8-307.
188
OHIM Examination Guidelines, supra note 184, at 5.
189
Id.
190
Id.
191
Keeling, supra note 67, para. 8‐010.
192
OHIM Examination Guidelines, supra note 184, at 8.

37
 The OHIM Guidelines stipulate that a trade mark has to consist of a sign that is graphically
representable and of distinguishing character.193 With regard to the notion of sign, the Guidelines
acknowledge that, in principle, a trade mark may consist of any sign.194 However, it also states
that Article 4 of the CTM Regulation may not be interpreted to allow any non-specific subject-
matter to necessarily qualify as a sign.195
In the context of the CTM, sound signs satisfy the requirements of graphical representation
when they are either submitted for registration in the form of musical notation, or in the form of
sonograms together with a sound file.196
In the Guidelines, the OHIM provides one example of a sound mark that was refused
application under Article 7(1)(a). It was an early submission of the Tarzan Yell for which the
applicant provided an incomplete sonogram. However, it has to be acknowledged that the
application was submitted at a time when registration of sound signs based on noises such as the
Tarzan Yell would generally not have been possible with OHIM.197 Yet another decision, not
included in OHIM’s Guidelines, is more interesting. It concerned a sound sign submitted in 2006
for trade mark registration. It was described as a musical jingle in the key of C composed of two
notes in the sequence of F, C and any relative equivalent thereof.198 OHIM denied its
registration.199 It held that the sound sign failed to comply with the requirement of graphical
representation.200 The written description of the sign did not correspond to the graphical
representation.201 OHIM concluded that based on the description it was impossible of knowing
what the sound mark would really sound like.202
The requirement of distinguishable character refers to an abstract ability of a sign to serve as
an indication of origin.203 With regard to distinguishable character, no decision on sound marks

193
OHIM Examination Guidelines, supra note 184, at 9.
194
Id.
195
Id.
196
See supra at 28; OHIM Examination Guidelines, supra note 184, at 11.
197
Id.
198
OHIM Refusal of application for a Community trade mark und Art. 7 of the Reg. and Rule 11(3) of the
Implementing Reg. in Application No. 004010336, Tellme Networks, Inc.
199
Id..
200
Id.
201
Id.
202
Id.
203
Id.

38
could be found in which OHIM established a lack of distinguishable character under Article
7(1)(a).204
It can be concluded that with regard to sound marks an applicant should make sure to comply
with the graphical representability requirement and provide in its application either adequate
musical notations or a complete sonogram together with a sound file. Finally, the applicant is
well advised to ensure that any description of the sound sign fits with the graphical
representation.

a) Switzerland
Switzerland distinguishes between formal and material examinations of a trade mark
application.205 The graphical representability belongs to the formal examination. As for the
CTM, a sound sign in Switzerland satisfies the requirements of graphical representation when it
is submitted for registration in the form of musical notation and, most likely, as well as in the
form of a sonogram together with a sound file.206
According to the IGE’s Trade Mark Guidelines, prior to examining if a sign might be denied
registration under Article 2 of the TmPA, the IGE will examine if the sign can be a trade mark at
all in the meaning of Article 1(1) of the TmPA.207 According the trade mark definition, such a
sign has to be able to distinguish and to perform the function of an indication of origin.208
Similar to the notion of distinguishability in Article 4 of the CTM Regulation, the TmPA
stipulates that a sign capable of being a trade mark requires abstract distinguishability.209
According to the IGE, a lack of distinguishability arises only in situations in which a sign would
under no circumstance be recognised and understood as a trade mark.210 Examples for such signs
are complex signs, such as barcodes and signs which are not recognised by the relevant public as
a consistent sign. This can be the case with long texts or melodies.211

204
As of November 24, 2015.
205
Richtlinien in Markensachen, 1. Januar 2011 (IGE Trade Mark Guidelines), IGE,
<https://www.ige.ch/file admin/user_upload/Juristische_Infos/d/rlma/rlma_d.pdf> [18.08.2015].
206
IGE Trade Mark Guidelines, supra note 205 at 22; See supra at 31.
207
IGE Trade Mark Guidelines, supra note 205 at 62.
208
Id.
209
Id.
210
Id.
211
Id.

39
 Assuming that a lack of distinguishability in the above meaning will only arise in very rare
cases, it can be concluded that, with regard to sound marks, an applicant should make sure to
fully comply with the graphical representability requirement and provide in his application
adequate musical notations. A complete sonogram together with a sound file would also be
likely to be accepted by the IGE in an electronic application.212 Finally, the applicant is well
advised to ensure that any description of the sound sign fits with the graphical representation.

b) United States
Given the availability of two registers, a sound mark applicant in the US can circumvent the
requirement of distinguishability. He can register a sound mark lacking distinguishability on the
Supplemental Register and await registration on the Principal Register until his trade mark has
acquired distinctiveness.213 An applicant will only face the requirement of distinguishability in
the event that he seeks registration of a sound mark directly from the Principal Register. Unlike
the EU and Switzerland, the US does not stipulate a particular form of graphical representation
as a requirement for a sign to qualify as trade mark. However, according to the Trademark
Manual of Examining Procedure (TMEP), the USTPO requires the applicant to supplement the
description of his sound sign with an electronic audio or video file. 214
It can be concluded that, with regard to sound marks, an applicant submitting a sound sign
for registration on the Supplemental Register should make sure to comply primarily with the
requirement of including an electronic audio or video file with the description of the sound sign.
However, if an applicant wishes to register a sound sign on the Principal Register or move a
sound mark from the Supplemental to the Principal Register, he will be required to demonstrate
that the sign or trade mark serves as an indication of origin, is distinctive and non-functional.215

2. Article 7 (3) CTM Regulation: Acquired Distinctiveness

Article 7(3) provides the basis to overcome the grounds for refusal stipulated in Article 7(1)(b)
(non-distinctive signs), Article 7(1)(c) (descriptive signs) and Article 7(d) (customary signs).

212
Bundi, supra note 9.
213
Pattishall et al., supra note 165, at 100-104.
214
807.09 “Drawing” of Sound, Scent, or Non-Visual Mark, Trademark Manual of Examining Procedure
(TMEP), http://tmep.uspto.gov/ [20.08.2015].
215
See infra at 39, 40, 40 and 41.

40
OHIM examines acquired distinctiveness only on request from the applicant. 216 The applicant
must provide the OHIM with evidence that proves that the sign has acquired distinctiveness prior
to the filing date of the application for trade mark registration.217
There has been only one case in which a sound sign was considered by OHIM to have
acquired distinctiveness. In 2009, PHILIPS submitted a short sound sign consisting of two
notes.218 Registration of the sound sign was first declined by OHIM on the ground of non-
distinctiveness stated in Article 7(1)(b) of the CTM Regulation. However, the decision was
eventually repealed in 2011. After PHILIPS submitted additional information, registration was
finally granted by OHIM on the basis that the sound sign had acquired distinctiveness.219
Unfortunately, the relevant documents leading to OHIM’s revised decision are classified as
confidential and cannot be accessed.
In 2013, the OHIM objected registration of a sound mark consisting of three musical
notes.220 It held that the three musical notes were too basic and were played in such a rapid way
that it would make little or no impact upon the consumer when heard. Interestingly, OHIM
provided the applicant with some guidance on the requirements to demonstrate that a sound mark

216
OHIM Examination Guidelines, supra note 184, at 77.
217
Id.; For more on assessing distinctiveness acquired through use see also Philips, supra note 15, at 109-
114 (2003).
218
OHIM refusal of application for a community trade mark und Art. 7 of the Reg. and Rule 11(3) of the
Implementing Reg. in Application No. 008293557, Koninklijke Philips N.V.
219
Unfortunately, the author could not recall any PHILIPS product that would emanate such a sound
mark. The author spent time searching the Internet for PHILIPS products related to the classes for which
the company obtained the sound mark. He could not find any PHILIPS product that would display the
particular sound mark on websites used for advertisement, such as PHILIPS product websites or
YouTube. However, the length sound sign seems to indicate that it might be related to the on/off
switching of PHILPS devices.
220
It concerned CTM 011377074 and 011377033, see supra at 45; See also Windsurfing Chiemsee in
which the CJEU established what was required in order for a mark to have acquired distinctive character
through use. In the same case, the CJEU rejected the German Doctrine of Freihaltungsbedürfnis a
concept that keeps certain signs free, i.e. not registrable as trade marks at all. Joined Cases 108/97 and
109/97 Windsurfing Chiemsee, in particular Rec. 37 of the judgement.

41
has acquired distinctiveness through use, which would allow the applicant to overcome Article
7(1)(b):221
 A Substantial part of the relevant public has to identify the product, based on the sound
sign, with a particular undertaking. Distinctiveness has to have been acquired prior to the
application for registration.
 The applicant is required to demonstrate that the sound sign has acquired distinctiveness
based on its use in the geographical area in which it has not previously had
distinctiveness.
 OHIM would assess the sign’s distinguishing capability based on all dimensions that can
demonstrate that the sign has acquired this capability, such as market share, intensity,
geographical reach, duration of use, advertisement expenditures of the undertaking for
the sign, the share of the relevant public that identifies products with a particular sign as
linked to the correct undertaking, as well as statements of chambers of commerce and
other professional associations.
 OHIM would assess distinguishability and acquired distinctiveness of the sign as trade
mark and would also examine how the relevant public perceives the relevant category of
products.
Some argue that the threshold for acquiring distinctiveness, i.e. recognition by the relevant
public, should be lower for sound marks than other types of trade marks.222 This would account
for the fact that sound marks are more difficult to memorise and distinguish amongst other
acoustic signals, and that their use for products is more limited.223 However, it seems unclear
how such a treatment could be reconciled with the general approach that signs of different types
should not be subject to different requirements with regard to distinctiveness.224
In the context of sound marks and the case cited above, acquired distinctiveness could be
relevant for sound icons that could initially be deemed by the OHIM too brief to function as an
indication of origin and, thus, be denied registration on the basis of Article 7(1)(b).225

221
OHIM refusal of application for a community trade mark und Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 011377074, CVS Pharmacy, Inc., at 2.
222
Kortbein, supra note 21, at 216.
223
Id.
224
See Ianeva, supra note 24.
225
See supra at 45.

42
 a) Switzerland
Article 2(a) of the TmPA stipulates that the following are excluded from trade mark protection:
[…] signs that are in the public domain, except where they have become established as a trade
mark through use for the goods or services for which they are being claimed.” The last part of
the sentence refers to acquisition of distinctiveness as seen in Article 7(3) of the CTM
Regulation. This Article concerns signs which were earlier considered excluded from protection
due to their inability to distinguish.
However, according to Swiss trade mark practice, to become established as a trade mark
through use (Verkehrsdurchsetzung) requires a very intensive use of that particular sign by an
undertaking explicitly in the function of a trade mark in the course its trade.226 Such a sign
becomes registrable only if a majority of the relevant public, i.e. potential consumers, in all of
Switzerland associates the sign with a particular undertaking.227 However, it is not required that
the relevant public identifies the particular undertaking by its name. Similar to the OHIM’s
assessment of acquired distinctiveness, the IGE examines all possible dimensions that can
demonstrate that a sign has in fact acquired distinctiveness.228 This requires, in particular, a
demoscopic market study in which sixty to seventy percent of the panel must recognise the sign
as a trade mark.229
Finally, Switzerland, unlike the EU, applies the concept of Freihaltungsbedürfnis.230
According to this legal concept the public domain consists of so called absolute signs that cannot
acquire distinctiveness.231 Examples include the natural colour of a product or a colour being
prescribed for a particular good, such as red for fire extinguisher.232
In light of the subject matter of the decision, acquired distinctiveness might be especially
relevant for sound icons that could be initially considered by OHIM too brief to be capable to
function as an indication of origin and, thus, be denied registration on the basis of Article
7(1)(b).233

226
IGE Trade Mark Guidelines, supra note 205 at 144-156; Thouvenin et al., supra note 92, at 159.
227
Id. Not only one in one or two language regions but in all.
228
Id.; See supra at 39.
229
IGE Trade Mark Guidelines, supra note 205 at 144-156; Thouvenin et al., supra note 92, at 159.
230
See supra note 220.
231
Id.
232
Id.
233
See supra at 45.

43
 b) United States
US trade mark legislation provides for a prima face presumption of acquired distinctiveness after
a period of five years of continued use in trade.234 As already mentioned, the US’ dual registers
provide the Supplemental Register the possibility of registering trade marks that are, at the day
of filing, not distinctive.235 When moving a trade mark from the Supplemental Register to the
Principal Register, the applicant has to provide evidence that the trade mark qualifies as an
indicator of origin and has acquired second meaning, i.e. distinctiveness. 236 Eventually, a sign
may be considered to have acquired distinctiveness and be registered on the Principal Register.
Three factors are used to determine if a sign has achieved secondary meaning derived, in
particular, from American Diabetes Association v. National Diabetes Association:237
 The length and manner of the term's use.238
 The nature and extent of advertising and promotion.
 Other efforts at creating a conscious connection in the public's mind between the
designation and the service.

234
See Hunter, supra note 165, at 151-152.
235
Id. and see 1212.03 Evidence of Distinctiveness under §2(f), Trademark Manual of Examining
Procedure (TMEP), http://tmep.uspto.gov/ [20.08.2015]; See In re General Electric Broadcasting
Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3 and cf. Ride the Ducks LLC v Duck Boat Tours
(2005 US Dist LEXIS 4422 (ED Pa), 2005 US Dist LEXIS 8162 (ED Pa, April 22 2005), 2005 US App
LEXIS 13554 (3d Cir, July 6 2005), para. 8-9.
236
Id.
237
See Ride the Ducks LLC v Duck Boat Tours (2005 US Dist LEXIS 4422 (ED Pa), 2005 US Dist
LEXIS 8162 (ED Pa, April 22 2005), 2005 US App LEXIS 13554 (3d Cir, July 6 2005), para. 7; Cf.
American Diabetes Association v. National Diabetes Association, 533 F. Supp. 16 (E.D. Pa. 1981).
238
The notion of use is fundamental to US trade mark law and registering a trade mark under the federal
and states systems. Use is required, however, what amounts to use is slights varied. With regard to the
federal system, i.e. a registration with the USPOT, the notion of use refers to use in interstate commerce.
For most applicants it is not a huge hurdle to registration. The only substantial requirement is that the
products a trade mark designates are used or transported in commerce. Thus, the notion of use “means the
bona fide use of a mark in the ordinary course of trade, and not made merely to reserve to reserve a right
in a [trade]mark” as stipulated in 15 USC §1127. See Hunter, supra note 165, at 158. In cases in which a
trade mark is only used in on state, i.e. intrastate commerce, a trade mark applicant might seek
registration in that particular state. See Bouchoux, The Laws of Trademarks, Copyrights, Patents, and
Trade Secrets, at 26. The notion of use is fundamental to Swiss trade mark legislation as well See
Thouvenin, supra note 92, at 172.

44
Over the past years, those factors have also been applied to sound signs seeking registration on
the Principal Register, such as in In re Powermat Inc., Nextel Communications, Inc. v Motorola,
Inc. and Ride the Ducks LLC v Duck Boat Tours.239 Both of those cases share that they failed to
provide the Patent Office Trademark Trial and Appeal Board (TTAB) with sufficient evidence
that the relevant sound sign had acquired secondary meaning. As such, they provide little
insights on the concept of distinctiveness.240 More importantly, it must be acknowledged that
even if a sound sign meets the requirements, i.e. acquired second meaning, if the USPTO
considers it to be functional, its registration on the Principal Register will not be allowed.241 In
the US, the concept of functionality serves as a limit to acquiring distinctiveness, similar to the
concept of Freihaltungsbedürfnis in Switzerland.242

Functionality, as described in the Lanham Act, cannot be remedied by acquiring

distinctiveness.243 In Qualitex Co. v. Jacobson Products Co. the Supreme Court held that a
product feature that is functional cannot serve as a trademark.244 Functionality exists if the
feature intended to be registered as a trade mark is essential to the use or purpose of the product
or if it affects the cost or quality of the product.245 In that regard, it is important to note that

239
In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), In re Powermat
Inc. 105 UPSQ2d 1789 (TTAB 2013); Nextel Communications, Inc. v Motorola, Inc. (TTAB 2008) and
Ride the Ducks LLC v Duck Boat Tours (2005 US Dist LEXIS 4422 (ED Pa), 2005 US Dist LEXIS 8162
(ED Pa, April 22 2005), 2005 US App LEXIS 13554 (3d Cir, July 6 2005).
240
Cf. infra at 57.
241
See In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009), para. 12.
242
See supra at 42; For more on the doctrine of functionality see also J. B. Pegram & T. E. Spath,
Doctrine of Functionality, at 225-274 (1992).
243
15 USC § 1052(f). Put it simple, “functionality trumps distinctiveness”. See Hunter, supra note 165,
at 156.
244
Qualitex Co. v. Jacobson Products Co., 34 USPQ2d 1 161 (S. Ct. 1995), at 1163-64, quoting Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n. 10 (1982). For more on
Qualitex Co. v. Jacobson Products Co. see Lange et al., Intellectual Property Cases and Materials,
American Casebook Series, at 72-80 (2007) Functionality is a doctrine in US trade mark legislation that
stipulates that trade mark protection is not available for the useful or functional features of a product. Put
it simple the functionality doctrine states that a trade mark owner cannot forestall competition by gaining
a monopoly over a functional feature of a product. See Hunter, supra note 165, at 156.
245
Id.

45
functionality does not equal non-distinctiveness.246 A sign may be found distinctive but may not
be registered due to functionality.
In In re NV Organon, the TTAB held that the reason why functionality shall not be protected
lies in the purpose of the Lanham Act.247 Trade mark law is not intended to reward an
undertaking for innovation in creating a particular product. This is the purpose of patent law.248
Trade mark law should not protect trade dress in a functional design simply because of the
investments made to encourage the public to associate a functional feature of the product with
the owner of the trade dress.249 In other words, the concept of functionality delimits the scope of
the Lanham Act against other areas of intellectual property legislation and thereby helps to
maintain a border between trademark law and patent law.250
While word or visual trade marks are less likely to be considered functional, non-traditional
trade marks, such as colour, smell, flavour or sound marks are more likely. Their close
relationship with the product they designate puts those trade marks at risk of being functional.
Establishing functionality requires an assessment of the factual basis in two steps:251
 An assessment of the Morton-Norwich factors to establish evidence of utilitarian
functionality.252
 An assessment of the competitive need for a sign to establish de iure functionality.

Morton-Norwich Factors: The Morton-Norwich factors answer the question of whether or not a
sign shows evidence of utilitarian functionality. These factors have their legal basis in In re
Morton-Norwich Prods Inc.253 Those factors are used to assess a trade mark by answering the
following four questions:254

246
In re Morton-Norwich Prods Inc., 671 F2d 866 (CCPA 1982).
247
In re NV Organon, 79 USPQ2d 1639 (TTAB 2006), para. 7.
248
Id.
249
Id.
250
Qualitex Co. v. Jacobson Products Co., Inc., 34 USPQ2d, at 1163-64.
251
In re NV Organon, 79 USPQ2d 1639 (TTAB 2006). Some refer here to the primary functionality test
and the secondary functionality test. See Hunter, supra note 165, at 157-158.
252
For more on Morton-Norwich Factors see also Pegram & Spath, supra note 242, at 235-238 (1992).
253
In In re Morton-Norwich Prods Inc. the applicant, Morton-Norwich Prods Inc., appealed a Dec. of the
USPTO which denied the registration of a shape as a trade mark for spray containers. In its Dec. the
TTAB reversed the Dec. of the USPTO and provided a catalogue of factors to assess functionality. See P.

46
 1. Does a utility patent exist that discloses the utilitarian advantages of the design?
2. Do the advertising materials for the design tout the design's utilitarian advantages?
3. Are functionally equivalent designs available to competitors?
4. Are there facts indicating that the design results in a comparatively simple or cheap
method of manufacturing the product?

It is important to note that not all four factors have to be established to find a sign to be
functional.255 Utilitarian functionality exists even if some assessed factors are found as neutral.256

Competitive need for a sign: The competitive need for a sign is an additional factor that should
be assessed.257 Factors for assessment include: the registration’s potential for substantial
competitive disadvantages as well as the competitors’ availability of substitutions if competitive
disadvantages are present. These questions are directed at establishing de iure functionality.258 It
cannot be determined simply by the contribution of a registered sign to the commercial success
of an undertaking.259 It requires assessing whether the registration of a particular sign would
hinder competition in the market place.260

During the past few years, sound marks have been subject to functionality assessments in the
US. This has been the case when applicants have sought registration for a sound sign in the
Principal Register. Among the most interesting cases in which the functionality of sound signs
were assessed are: In re Vertex Grp. LLC and Kawasaki Motors Corp. U.S.A. v H-D Michigan
Inc. The latter concerned Harley-Davidson’s (HD) attempts to obtain trade mark protection for

Goldstein & R. A. Reese, Copyright, Patent, Trademark and Related States Doctrines, Cases and
Materials on the Law of Intellectual Property, at 1137-1141 (2012).
254
In re NV Organon, 79 USPQ2d 1639 (TTAB 2006), para. 7-9; I In re Morton-Norwich Prods Inc., 671
F2d 866 (CCPA 1982).
255
In re NV Organon, 79 USPQ2d 1639 (TTAB 2006), para. 7.
256
TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d at 1006).
257
In re NV Organon, 79 USPQ2d 1639 (TTAB 2006), para. 9.
258
Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d 1120 (Fed. Cir. 1994) at 1121; 1122-23; See also
In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000).
259
Id.
260
Id.

47
the engine sound of its motorcycles. The case gained considerable media attention in the US as
well as Europe.

In re Vertex Grp. LLC: In 2009, Vertex Group LLC submitted a sound sign for registration on
the Principal Register.261 The examiner rejected registration of the sound sign. Eventually, the
applicant appealed the examiner’s decision. The TTAB rejected the appeal on the ground that the
sound sign was functional.262 The sound sign consisted of a descending frequency sound pulse
from 2.3 kHz to approximately 1.5 kHz following an exponential RC charging curve. 263 The
sound sign was supposed to be used as a personal security alarm. This would take the form of a
child's bracelet application used to deter and prevent child abductions. 264 With regard to the
capability to perform the function of a trademark, the TTAB concluded that the sign was a sound
emitted in the normal course of operation of the bracelet and, thus, qualified the sound as non-
distinctive. Registration on the Principal Register would only be possible if the sign acquired
second meaning and, thus, distinctiveness.265 In that regard, the TTAB referred to In re General
Electric Broadcasting Company, Inc. quoting that registration is required to be […] supported by
evidence to show that purchasers, prospective purchasers and listeners do recognise and
associate the sound with services offered and/or rendered exclusively with a single, albeit
anonymous, source.266 The TTAB held that even if Vertex Group LLC would have submitted the
sign for registration based on acquired second meaning, registration would have been refused on
the ground of functionality.
After assessing the Morton-Norwich Factors, the TTAB concluded that the sign was
functional and therefore not registrable as a trade mark.267 The TTAB deemed the first factor, the
existence of a utility patent, neutral. However, because the applicant advertised the sound as
being an implicitly critical feature of the device, a utilitarian advantage, the second factor was
confirmed.268 Regarding the third factor, the TTAB argued that given the description of the
sound sign, the applicant would be free to combine sound pulses for a large range (i.e. 1000 Hz

261
In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009).
262
Id., para. 9 and 10.
263
Id., para. 1.
264
Id.
265
Id., para. 9.
266
In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3.
267
In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009), para. 12.
268
Id.

48
to 2000 Hz).269 Protecting this range would deprive competitors of many sound signs within this
optimal range, despite the fact that there are, in principle, innumerable combinations of
frequencies available for personal alarms.270 Consequently, the TTAB also established
functionality with regard to the third Morton-Norwich factor. Regarding the fourth and final
factor, the TTAB concluded that the sound sign would not provide any relative cost advantages
to the applicant, thus, qualifying this factor as neutral.271 Eventually, the TTAB decided that the
sound sign qualified as utilitarian functional, denying it registrability on the Principal Register.272

Kawasaki Motors Corp. U.S.A. v H-D Michigan Inc.: In 1994, this case drew much attention in
the United States and abroad; it concerned Harley-Davidson’s (HD) application for a sound mark
to be registered in the Principal Register.273 The company applied for registering the engine
sound of its motorcycles.274 HD held that the sound mark was used locally and in interstate
commerce at least since the 1930s.275 The company sought registration for class twelve of the
Niece Classification, for motorcycles in particular.276 The sound sign was described as the
exhaust sound of HD’s motorcycles produced by V-Twin, common crankpin motorcycle
engines.277 As its reason for registering this sound, HD argued that competitors have attempted
to copy their unique sound and, thus, decided to seek protection for it.278 Eventually, nine of
HD’s competitors, including, among others, Kawasaki and Honda from Japan, filed oppositions

269
In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009), para. 12.
270
Id.
271
Id.
272
For more on In re Vertex Grp. LLC see D. R. Bumpus, Bing, Bang, Boom: An Analysis of in RE
VERTEX Group LLC and the Struggle for Inherent Distinctiveness in Sound Marks Made During a
Products Normal Course of Operation, 21 FEDCBJ 245 (2011).
273
Kawasaki Motors Corp. U.S.A. v H-D Michigan Inc., 43 USPQ2d 1521 (TTAB 1997) and see Honda
Giken Kogyo Kabushiki Kaisha v v H-D Michigan Inc., 43 USPQ2d 1526 (TTAB 1997).
274
Application by Harley-Davidson, Inc. to have the sound of their motorcycles trademarked, The 'Lectric
Law Library, http://www.lectlaw.com/files/inp14.htm [18.08.2015].
275
Id.
276
Id.
277
Kawasaki Motors Corp. U.S.A. v H-D Michigan Inc., 43 USPQ2d 1521 (TTAB 1997) and see Honda
Giken Kogyo Kabushiki Kaisha v v H-D Michigan Inc., 43 USPQ2d 1526 (TTAB 1997).
278
Application by Harley-Davidson, Inc. to have the sound of their motorcycles trademarked, The 'Lectric
Law Library, http://www.lectlaw.com/files/inp14.htm [18.08.2015].

49
against the registration of HD’s sound mark.279 For almost six years, HD faced opposition to its
trade mark applications by competitors.280 In 2000, HD finally dropped its sound mark
application.281 Among the reasons stated by HD for dropping the application were the substantial
legal costs that the fight against the competitors entailed and that the sound of its engine might
sooner or later become generic.282
The application was abandoned before the USPTO could take a decision on registrability.283
However, the TTAB noted already in 1997, that if the case would proceed to trial it would have
to assess if the submitted sound sign would be descriptive of motorcycle engines and if the trade
mark would be considered functional. In light of In re Vertex Grp. LLC, the TTAB would have
had to assess HD’s sound sign based on the evidence provided by HD as well as the arguments
of the applicant and the USPTO examiner.284 It would have therefore needed to assess the sound
sign’s capability to perform the function of a trademark and determine if the sign showed
utilitarian functionality. HD’s evidence might have shown that the relevant public would
perceive the sign as an indicator of origin. It might also have shown that, in the words of the
TTAB in In re General Electric Broadcasting Company, Inc., […] purchasers, prospective
purchasers and listeners do recognise and associate the sound with services offered and/or
rendered exclusively with a single, albeit anonymous, source, and, thus, that it had acquired
second meaning.285
However, it seems likely that HD’s sound sign would have been qualified by the TTAB as
possessing utilitarian functionality. While not all Morton-Norwich Factors would have been met,
HD seems to fulfil at least two of them. This would have been sufficient to qualify the sound
sign as functional. First, HD advertised its motorcycles by touting their design as well as their
unique sound, an element considered very important by HD (second Morton-Norwich Factor). In
addition, HD explained that its motive behind its trade mark application was that competitors
were copying the unique sound of its motorcycles. Given the vague description of the sound

279
M. B. Sapherstein, The Trademark Registrability of the Harley-Davidson Roar: A Multimedia
Analysis, B.C. Intell. Prop. & Tech, at 3 (1998).
280
J. O’Dell, Harley Davidson Quits Trying to Hog Sound, The Los Angeles Times, 21 June 2002.
http://articles.latimes.com/2000/jun/21/business/fi%AD431451/2 [18.08.2015].
281
Id.
282
Id.; See infra at 48.
283
Kawasaki Motors Corp. U.S.A. v H-D Michigan Inc., 43 USPQ2d 1521 (TTAB 1997), para. 5
284
In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009), para. 1.
285
In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3.

50
sign, HD would have been in a position to claim protection for a large range of sounds derived of
the common range of motorcycle sounds of V-twin engines. This would likely have deprived
competitors of using similar sounds from the same range of motorcycle sounds (third Morton-
Norwich Factor). Finally, with regard to the competitive need for the sign, it seems likely that
the sound sign performs a utilitarian function that cannot be monopolised without hindering
competition in the relevant market. This has been indicated already with regard to the third
Morton-Norwich Factor. Thus, it seems likely that the USPTO would have denied registration of
HD’s sound mark on the Principal Register.286

While the concept of acquired distinctiveness is principally the same in the US as it is in the EU
and Switzerland, US settled case law indicates that sound marks may in practice face an
additional barrier in the US: functionality. Interestingly, the Morton-Norwich Factor emerged of
a case in which trade mark registration was sought for a shape but, as US case law indicates,
apply today for sound signs as well. An applicant submitting a sound sign for registration on the
Principal Register should ensure that his sound sign would not qualify as functional through an
assessment of the Morton-Norwich Factors and an assessment of the competitive need for that
particular sound sign.

3. Article 7 (1) (d) CTM Regulation: Customary Signs287

Article 7(d) (customary signs) refers to signs that have become customary. 288 It overlaps with
Article 7(1)(c) (descriptive signs) which prevents the registration of descriptive marks.289 The
CJEU held, in Merz & Krell GmbH & Co., that signs falling under Article 3(1)(d) are not
excluded from registration as trade marks on the basis that they are descriptive.290 This exclusion
is based on their current usage in trade.291 Thus the CJEU held in its ruling that Article 3(1)(d)
of the TM Directive must be interpreted as:292

286
See also Sapherstein, supra note 279, at 5-6.
287
Ianeva, supra note 24, at 53.
288
OHIM Examination Guidelines, supra note 184, at 66.
289
Keeling, supra note 67, para. 8‐010.
290
Case 517/99, Merz & Krell GmbH & Co., in particular Rec. 35 of the judgement.
291
Id.; For more on customary signs see also Philips, supra note 15, at 74-86 (2003).
292
Id.

51
 […] only precluding registration of a trade mark where the signs or indications of which the
mark is exclusively composed have become customary in the current language or in the bona
fide and established practices of the trade to designate the goods or services in respect of
which registration of that mark is sought. (emphasis added)

Customary signs might once have been capable of distinguishing the goods or services of one
undertaking from those of another.293 However, in the normal language or trade they have
become signs identifying those goods and services.294 In other words, they have become generic
and can no longer perform a distinguishing function and are thus excluded from registration.295
So far, the OHIM has not declined registration of sound marks on the basis of Article 7(1)(d).
Customary signs also cover figurative elements, such as frequently used pictograms or similar
indications. Figurative elements that have become standard designations for products are, for
example, a knife and fork for restaurant services, or a white P for parking lots. In that context, it
is likely that sound signs might be affected as well by Article 7(d). According to the pictogram
examples, the classic telephone ring tone is likely to have become a customary sign by now. The
circumstances under which sound signs related to new communication devices, such as smart
phones, might become customary signs are more difficult to establish. In general, the opinions
vary on the issue of customary sound signs.296

a) Switzerland
Swiss trade mark legislation does not differentiate between non-distinctive, descriptive or
customary signs as the CTM Regulation and the TM Directive do. Those concepts are all
covered by the notion that signs that are in the public domain in Article 2(a) of the TmPA.
However, for some signs in the public domain, Switzerland applies the concept of Freizeichen,
which is similar to the notion of customary sign in the EU.297 Such signs were once capable of
distinguishing; however, over time they became customary and acquired a descriptive character.

293
L. Bently & B. Sherman, Intellectual Property Law, at 590 (2008).
294
Id.
295
Id.
296
Bahner, supra note 21, at 48 -67.
297
Id., supra note 21, at 85.

52
Swiss legislation differentiates between registered and not registered customary signs. 298 With
registered signs, the transition to customary signs is only completed if the relevant public no
longer perceive the sign as a trade mark.299 With regard to unregistered signs, it is sufficient that
a particular group of people use the sign in a descriptive manner.300 A sound sign considered
customary would therefore either lose or not be able to obtain trade mark protection in
Switzerland.

b) United States
Similar to Swiss trade mark legislation, US legislation does not explicitly stipulate the notion of
customary signs in its trade mark legislation. With regard to refusals based on a lack of
distinctiveness, however, the US applies the notion of generic terms or generic marks which is
conceptually similar to customary signs in the EU or Freizeichen in Switzerland.301 According to
the USTP, [g]eneric terms are terms that the relevant purchasing public understands primarily
as the common or class name for the goods or services.[…] These terms are incapable of
functioning as registrable trademarks denoting source, and are not registrable or on the
Principal Register under […] the Supplemental Register.302 In other words, a generic mark
cannot be registered because it would preclude competitors from being able to describe the
nature of their products.303 Some trade marks may be generic from the beginning and others
might become generic through use.304 In that regard, a sound sign considered generic in the US
would be unable to obtain trade mark protection. It is important to note that this extends to the
Principal as well as the Supplemental Register.

4. Article 7 (1) (c) CTM Regulation: Descriptive Signs

Article 7(1)(c) (descriptive signs) prevents the registration of signs which are descriptive. It
prevents the registration of signs which competing undertakings may want to use, for describing

298
Bahner, supra note 21, at 85.
299
Id.
300
Id.
301
See Hunter, supra note 165, at 149-150.
302
1209.01(c) Generic Terms, Trademark Manual of Examining Procedure (TMEP),
http://tmep.uspto.gov/ [20.08.2015];
303
See Hunter, supra note 165, at 149-150.
304
Id.

53
their products, for example.305 A sign is descriptive if it has a meaning which is perceived by the
relevant public as providing information about the products applied for. This is the case when it
provides information, among other things, on the quantity, quality, characteristics, purpose, kind
or the size of the products.306 Article 7(1)(c) overlaps with Article 7(d) which refers to signs that
have become customary.307 However, in case a sign is composed of different elements,
descriptiveness can be remedied with disclaimers.308 A disclaimer cannot be used to (negatively)
exclaim subject matters of the class to which the trade mark refers to and which it
characterises.309 It can only be used to positively exclaim a subject matters of the class to which
the trade mark refers to.310
However, assessing descriptiveness with regard to sound signs might be difficult, especially
for sound signs which are devoid of textual elements. Can a melody or a particular noise be
descriptive in the meaning of Article 7(1) (c) of the CTM Regulation? Under which
circumstance would they be qualified as descriptive? The CJEU provides some guidance for
assessing distinctiveness for trade marks based on words.311 In Procter & Gamble Company v
Office for Harmonisation in the Internal Market it established three conditions which have to be
met to qualify a trade mark as descriptive.312 Those conditions can be summarised as follows:
 There is nothing about the way in which the sign is presented, nor does it possess any
additional features to cause it to be anything other than solely descriptive.
 The sign alludes to an essential quality of the goods, and not a secondary quality or one
that is not specific to them.
 That allusion is clear to potential consumers of the goods.

305
Keeling, supra note 67, para. 8‐010.
306
OHIM Examination Guidelines, supra note 184, at 36
307
Id., at 49.
308
Id.
309
Id.
310
Id.
311
For more on assessing descriptiveness see also Philips, supra note 15, at 98-109 (2003).
312
Judgment of 20 September 2001 in Cases C-383/99 P, Procter & Gamble Company v Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (BABY-DRY), [2001], in particular
Rec. 39 of the judgment.

54
 Moreover, in Windsurfing Chiemsee, the CJEU held that it is necessary to consider the
application of Article 7(1)(c) on a case by case basis. 313 Therefore, it rejected the German
doctrine of Freihaltungsbedürfnis, which claims that there should be a differentiation on the
importance of keeping certain signs free, i.e. not registrable as trade marks. 314 Rejecting the
doctrine of Freihaltungsbedürfnis means that descriptive signs may be allowed registration as
trade marks as long as the resulting trade marks are not associated with the descriptive meaning
the sign incorporates. While settled CJEU case law and the OHIM Guidelines provides guidance
for trade marks based on word elements, colours, slogans, pictograms, patterns, they offer little
guidance for sound marks.315
So far, the OHIM has declined registration of a sound sign only in one decision, in 2014.316
While it is clear OHIM declined on the basis of Article 7(1)(c), unfortunately, it did not publish
the full reasoning of the decision. It can only be speculated that the sound mark submitted by
Daimler AG was perceived by OHIM to sound similar to the sound of an engine revving up and,
was therefore descriptive with regard to class twelve of the Niece Classification for which
registration was sought for, i.e. vehicles (motors and engines for land vehicles).
In 2011, the OHIM referred to descriptiveness in another decision, in which a sound sign was
denied registration under Article 7(1)(b). An applicant sought registration for the sound resulting
when two Bordeaux wine glasses clink.317 The OHIM held that the clinking sound of two glasses
would semantically indicate the characteristic of the good for which the sound sign was
supposed to function as a trade mark. Registration was sought for class twenty-one of the Niece
Classification, household or kitchen utensils and containers. The OHIM held that the sound sign
would likely describe the noise that results when two glasses, the products for which it was
supposed to serve as trade mark, would clink.318 The OHIM added that the relevant public
would, thus, be unlikely to perceive in the sound sign an indicator of origin.319 Despite this
finding, the OHIM finally declined registration on the basis of non-distinctiveness.320

313
Joined Cases 108/97 and 109/97 Windsurfing Chiemsee, in particular Rec. 37 of the judgement.
314
Id., in particular Rec. 37 of the judgement; Bently & Sherman, supra 293, at 591.
315
See, e.g. Novak, supra note 21; See OHIM Examination Guidelines, supra note 184, at 36-56.
316
CTM 012074241, as of Ocotober 22, 2015.
317
HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäss Artikeln 7 der Verordnung
und Regel 11(3) der Durchführungsverordnung in Anmeldenummer No. 009980632, GRUND & MOBIL
VERWALTUNGS AG.
318
Id.
319
Id.

55
 HEXAL provides another interesting decision with regard to descriptiveness.321 HEXAL
Aktiengesellschaft sought trade mark registration for a sound mark consisting of the spoken
words Arzneimittel Ihres Vertrauens - HEXAL (translated as: “medicine you can trust:
HEXAL”). The Fourth Board of Appeal granted registration in 2005. While the appeal case
centred on the graphical representation of the sound sign, the Board of Appeal referred in a
notice at the end of the case to a special issue which limited the scope of protection offered to the
registered sound mark. It held that:322

The slogan ‘Arzneimittel Ihres Vertrauens: Hexal’ shall, on the basis of this registration, only
be protected as a sequence of sounds as represented by the sonogram. The scope of the
protection for such a mark does not extend to the written statement: ‘Arzneimittel Ihres
Vertrauens: Hexal’. Applying to register a spoken statement, a slogan, as a sound mark cannot
remedy or circumvent a word mark’s ineligibility for registration.

A part of the text of the sound mark, i.e. Arzneimittel, is descriptive with regard to the product
and, thus, not eligible for protection under Article 7(c). Given the lack of other comparable
OHIM decisions, it is not clear if HEXAL will remain an exceptional decision. It is unclear if a
similar trade mark application would benefit by the same treatment. However, it might indicate
that under certain circumstances a sound mark could be only partially protected, i.e. the
sonogram but not the spoken statement.
With regard to descriptiveness, an applicant for a sound sign has to consider if the sign
semantically gives rise to an association with the product it is supposed to designate. An example
for an obvious semantic association could be the use of a famous Christmas melody or parts of it,
such as Jingle Bells, as a trade mark for Christmas decoration. Descriptiveness can be, in
particular, an issue with sound signs based on noises of natural origin as they are well-known to
the public.323 A simple example would be the characteristic noise of a pig for meat products. In
all those cases, it seems likely that the OHIM would deny registration on the basis of
descriptiveness.

320
HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäss Artikeln 7 der Verordnung
und Regel 11(3) der Durchführungsverordnung in Anmeldenummer No. 009980632, GRUND & MOBIL
VERWALTUNGS AG.
321
Case R 295/2005-4, HEXAL.
322
Id., at 17 of the judgment.
323
Kortbein, supra note 2121, at 195.

56
 a) Switzerland
Article 2(a) of the TmPA stipulates the absolute grounds for refusal in Swiss trade mark
legislation by referring to signs that are in the public domain. This incorporates the notion of
non-distinctiveness to which the IGE referred to when denying registration to a sound mark in
Melodie mit sieben Tönen. Still, the same article also incorporates the notion of descriptiveness.
In Melodie mit sieben Tönen the Federal Supreme Court elaborated on the notion of
descriptiveness with regard to sound marks.324
According to the BGER, the descriptive character of a sound sign is decisive in determining
whether it belongs to the public domain.325 A descriptive sign also, however, is not capable of
functioning as an indicator of origin.326 Such signs are, for example, terms for products or terms
referring to product characteristics. However, such signs are considered descriptive only if the
relevant public understands them as obviously descriptive and not merely an allusion.327
According to the BGER, the relevant public has to understand the descriptive meaning directly,
effortlessly and without using fantasy.328
According to the Federal Supreme Court, a descriptive sound sign belonging to the public
domain can be a well-known melody if the vocals can be considered descriptive in relation to the
particular product it is supposed to designate.329 But a melody without vocals can also be
considered descriptive if it gives rise to a particular association of ideas that can be considered
descriptive with regard to the product it designates.330
Moreover, the Federal Supreme Court held that a famous melody is unlikely to be considered
distinctive if the relevant public perceives it as a descriptive add-on rather than an indicator of
origin. A famous Christmas song as a trade mark for Christmas decoration would be denied trade
mark registration as it would be considered by the relevant public a descriptive add-on rather an
indication of origin.331 Eventually, it would be assumed to belong to the public domain. Here, the

324
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5 of the judgement.
325
Id.
326
Id.
327
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.5 of the judgement.
328
Id.
329
Id.
330
Id.
331
Id.

57
Federal Supreme Court drew analogy to word marks.332 It argued that, similar to a descriptive
word mark called Christmas, the average consumer would associate the sound sign with
Christmas. 333 The sound sign would display a direct relationship with the product but not with
the origin of the product itself, i.e. the company.334
The Federal Supreme Court concluded that the capability to distinguish is likely to be denied
when famous melodies are used as sound signs. They generally perform other functions than
indicating the origin of a good or a service.335 Famous melodies are often used for advertising;
the relevant public considers them as means to attract attention or as incentives to purchase.336
With regard to the sound sign in Melodie mit sieben Tönen, the Federal Supreme Court
concluded that it could not be considered descriptive for two reasons. First, the melody did not
show a direct relationship with the good for which it was supposed to act as an indicator of
origin.337 In other words, the melody would not give rise to a particular association of ideas
among the relevant public that could be considered descriptive with regard to the good it
designates. Second, the melody has a simple structure and short duration and, thus, does not
resemble a mere background sound for advertisement.338 In other words, the melody could not be
considered merely a means to attract attention or purchasing incentives by the relevant public.
While the melody in the case at hand was not considered descriptive, the Federal Supreme Court
emphasised that in order to be capable of distinguishing between the product of the undertaking
involved and those of other undertakings, the sound sign has to be used in a way that the relevant
public perceives the sound sign as an indication of origin.339

332
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.5 of the judgement.
333
Id.
334
Bahner, supra note 21, at 151.
335
Id.
336
Bahner, supra note 21, at 151.
337
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.6 of the judgement.
338
Id.
339
Id.

58
 b) United States
Descriptiveness is a less problematic issue in the US than in the EU or Switzerland due to the
existence of the Principal and Supplemental Register.340 It is a ground for refusal particularly
with regard to the registration of a trade mark on the Principal Register. 341 A descriptive sign is
considered non-distinctive and, thus, not eligible for registration in the Principal Register, except
if the applicant provides evidence that the sign is perceived by the relevant public as a trade
mark, i.e. has acquired distinctiveness.342 However, the US system provides for an alternative
registration option. A descriptive sign can be registered on the Supplemental Register. This
grants a sign time to acquire secondary meaning and, thus, to gain distinctiveness. Usually after a
period of five years, the trade mark owner applies for moving his sound mark from the
Supplemental Register to the Principal Register. The owner then supplies his application with
evidence indicating that his trade mark has acquired secondary meaning. Unlike the EU or
Switzerland, the Supplemental Register allows trade marks considered descriptive to benefit
from limited legal protection. However, there are limits to the acquisition of second meaning, i.e.
if a trade mark is considered functional.343
With regard to the Harley Davidson case, it is unlikely that OHIM, based on its registration
practice would have granted trade mark protection. 344 The sound sign would most likely have
been considered descriptive and would have been refused registration on the basis of
descriptiveness.345

340
As already mentioned, see supra at 41, US trade mark legislation provides for a prima face
presumption of acquired distinctiveness after a period of five years of continues use in trade. However,
secondary meaning is commonly through market surveys providing evidence on consumer perception and
recognition of the trade mark combined with details of sales volumes of the products designated by the
trade mark and expenditures on advertisement and marketing. See Hunter, supra note 165, at 151-152.
341
15 USC § 1052 (e) (1)
342
See supra at 39.
343
Id.
344
Id.
345
See also Sandri & Rizzo, supra note 24, at 145 (2003).

59
5. Article 7 (1) (b) CTM Regulation: Non-Distinctive Signs
Article 7(1)(b) (non-distinctive signs) has the broadest scope and is most closely related to the
two first criteria determining the capability of a sign to perform the function of a trade mark. 346
According to settled case law, the distinctiveness of a mark within the meaning of Article 7(1)(b)
CTMR means that a sign identifies a product for which registration is applied for as originating
from a particular undertaking. The sign would therefore distinguish that product from those of
other undertakings.347
The OHIM provides some guidance on how to assess distinctiveness.348 It should first be
assessed in reference to the goods or services that the sign supposedly designates and second in
reference to the relevant public’s perception of that sign.349 As for CTMs, it is important to take
into account that in order to be distinctive as a Community trade mark, the sign must be
distinctive with regard to the EU as a whole.350 The OHIM’s Guidelines help to assess various
types of trade marks, traditional and non-traditional; however, they lack guidance for assessing
the distinctiveness of sound marks.351
Many signs that obtain trade mark protection are inherently distinctive because they carry no
meaning at all.352 Invented words exemplify such trademarks because of their naturally
distinctive character. However, assessing distinctiveness is difficult, as it is impossible to clearly
articulate when a trade mark has a strong distinctive character and when not. 353 In some cases,
the assessment of the level of distinctiveness rests on the public’s recognition of a sign as a trade
mark. This is the case, for example, when providing evidence that a particular sign has acquired
distinctiveness through use.354 However, generally, the assessment is based on a sign’s inherent
capability to serve as an indicator of origin and, thus, on its quality as a sign prior to being
introduced to the market and to consumers.355

346
Keeling, supra note 67, para. 8‐010.
347
See supra at 18.; OHIM Examination Guidelines, supra note 184, at 14.
348
For more on assessing distinctiveness see also Philips, supra note 15, at 86-98 (2003).
349
OHIM Examination Guidelines, supra note 184, at 14.
350
See supra at 34; OHIM Examination Guidelines, supra note 184, at 14.
351
See J. Novak, supra note 22; See OHIM Examination Guidelines, supra note 184, at 15-35.
352
Ianeva, supra note 24, at 46.
353
Case 342/97, Lloyd Schuhfabrik Meyer, in particular Rec. 24 of the judgment.
354
Ianeva, supra note 24, at 69; See supra 39.
355
Id.

60
 Legal scholars have come to different conclusions when assessing the distinctiveness of
particular sound signs.356 While some simply highlighted the complexity of the issue, others
tackled the problem by establishing and assessing a phenomenology of sound marks. 357
Concerning the latter, as already mentioned, the lexicon of audio branding or marketing has no
legal purpose or value.358
This study takes a divergent approach and focuses on OHIM decisions with regard to Article
7(1)(b). However, it is important to note that those decisions should not be treated as settled case
law or OHIM guidance. They provide guidance for applicants insofar as they shed light on how
OHIM decided on certain cases. Investigating those cases in which OHIM declined registration
of a sound sign on the basis of Article 7(1)(b), refers, in the words of the CJEU, to sound signs
which did not enable the relevant public to [...] repeat the experience of purchase, if it proves to
be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition
of the goods or services concerned.359 Compared to the other absolute grounds for refusals, non-
distinctiveness provides the foundation for most OHIM decisions.360 Interestingly, in one of
those cases, OHIM elaborated on how a sound sign should be assessed with regard to its
distinctive character, referring to the CJEU decision in Quick.361 A sign should first be assessed
by reference to the goods or services, and second, by reference to the perception of the section of
the public targeted.362 However, an investigation of OHIM decisions reveals an additional
dimension through which they assess a sound sign: by the nature of the sound sign per se. The
following three sections illustrate the OHIM’s decisions with regard to those three assessment
dimensions:363

356
See supra note 23.
357
See, e.g. Suter-Sieber, supra note 23.
358
See supra at 13.
359
Judgment of 27 February 2002 in Case T-79/00, Rewe Zentral AG v Office for Harmonisation in the
Internal Market (Trade Marks and Designs) (LITE), [2002] ECR II-00705, in particular Rec. 26 of the
judgment.
360
As of November 20, 2015.
361
OHIM refusal of application for a community trade mark under Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 011377074, CVS Pharmacy, Inc., at 2; Judgment of 27 November
2003, Case T- 348/02, Quick restaurants SA / OHIM, (Quick), ECR II-5071.
362
Case T- 348/02, Quick, in particular Rec. 29 of the judgement.
363
The decisions can be accessed on the OHIM Website, https://oami.europa.eu [18.08.2015].

61
Assessment of the sound sign per se: In 2006, Tellme Networks, Inc. sought registration for a
musical jingle in the key of C composed of two notes in the sequence of F, C and any relative
equivalent thereof.364 The OHIM held first that a musical jingle is […] a short slogan, verse or
tune designed to be easily remembered, especially as used in advertising.365 It opined that a tune
based on two notes will have little impact, if any, on consumers. The OHIM concluded that if
heard by a consumer, it would most likely be […] understood as a very banal sound, much like
the “ding dong” of any doorbell or any public address system. It further asserted that no trade
mark character could be assigned to the submitted sound sign. In 2011, the OHIM dealt with a
sound sign consisting of a sound resulting when two Bordeaux wine glasses clink.366 The OHIM
held that the sound is common as it happens when other similar vine glasses or ceramic glasses
clink. It also held that because the sound consists only of one tonal sound, a similar sound could
likely originate from another source. The OHIM concluded that such a sound sign is
commonplace and that it is unlikely that the average consumer would perceive such as sound
sign as a trade mark. Later, in 2013, the OHIM processed the registration of a sound sign
consisting of three musical notes.367 It held that the three musical notes applied for trade mark
protection were so basic and played so rapidly that it would make little or no impact upon the
consumer when heard.368 The relevant public would simply associate it with machine-generated
sound alerts which are commonly emitted by computers and other electronic devices.369
Moreover, it deemed it unlikely that the relevant public would focus on the sound with sufficient
attention to memorise it. Consequently, the relevant public would be unable to remember the
sound sign as a trade mark capable of distinguishing immediately the applicant’s goods and
services from those of other origin. In the same year, the OHIM dealt with a sound sign

364
OHIM Refusal of application for a Community trade mark und Art. 7 of the Reg. and Rule 11(3) of the
Implementing Reg. in Application No. 004010336, Tellme Networks, Inc.
365
Id.
366
HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäss Artikeln 7 der Verordnung
und Regel 11(3) der Durchführungsverordnung in Anmeldenummer No. 009980632, GRUND & MOBIL
VERWALTUNGS AG.
367
OHIM Refusal of application for a Community trade mark und Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 011377074, CVS Pharmacy, Inc.
368
Id. at 2.
369
Examples for famous sound icons are Windows start up and shut-down sounds; See also supra at 10.

62
consisting of a ping tone submitted for registration.370 It concluded that in the case of a
supereinfachen (sic!) (super-simple) ping tone it seems undenkbar (sic!) (unconceivable or
impossible) that such a sound sign would be capable of performing the task of an indication of
origin for the relevant public.371 In 2014, the OHIM handled the registration of multiple sound
signs submitted by one applicant. OHIM denied registrability in all cases. One of the sound signs
consisted of three discreet multi-layered synthesised sounds.372 OHIM held that the sound sign
allowed for two different perceptions. It could be perceived as a basic machine-generated
synthesised sound emitted by some sort of electronic apparatus or it could be perceived as a
sound made by a motor engine.373 This would make it impossible for the relevant public to
distinguish the sound sign as well as to confidently link the sound sign to the specific
undertaking applying for registration. Moreover, the OHIM considered the sound sign to be too
brief and lacking elements of distinctive character that would allow the sound sign to be easily
recalled by the average consumer. In addition, it found the sound sign to be neither unusual nor
remarkable. Finally, OHIM concluded that the sound sign would not be capable of performing
the essential function of a trade mark, to distinguish goods or services of one undertaking from
those of another. In the same year, the OHIM specified that a tune is by nature hardly suitable to
transmit distinctive information to the average consumer.374 According to the OHIM, a tune
sequence may only under extraordinary circumstances acquire distinctiveness.375 This is only the
case if a tune sequence is perceived as extraordinary and remarkable by the relevant public.376

370
HABM Vollständige Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäss Artikeln 7
und 37 der Gemeinschaftsmarkenverordnung Nr. 207/2009 (GMV) und Regel 11(3) der
Durchführungsverordnung Nr. 2868/1995 (DV) in Anmeldenummer No. 11747045, Krinner Innovation
GmbH.
371
Id., at 4.
372
OHIM Refusal of application for a Community trade mark und Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 01192357, Jaguar Land Rover Limited.
373
OHIM Refusal of application for a Community trade mark und Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 01192357, Jaguar Land Rover Limited, at 4.
374
HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäß Artikel 7
GMV und Regel 11 Absatz 3 GMDV in Anmeldenummer No. 012674958, Bayer Aktiengesellschaft.
375
Id., at 2.
376
Id.

63
Assessment of the sound sign by reference to the relevant goods or services: In most cases when
the OHIM denied registration of a sound sign, the assessment of the sound sign vis-à-vis the
relevant goods and services also served the purpose of identifying the relevant public. In some
cases the OHIM focused very narrowly on the relevant goods and services, in particular, on the
situation in which a sound sign would be expected to perform its function as a trade mark. In one
case when a sound sign consisted of three discreet multi-layered synthesised sounds, the
applicant emphasised that in the light of the relevant products, luxury cars and expensive
services, potential customers would likely exhibit high attention, especially, with regard to trade
marks.377 Under those circumstances, the applicant concluded that a brief or simple sound sign
would be able to perform the function of a trade mark. However, the OHIM had a different
assessment of the situation. According to the OHIM, those situations in which consumers usually
buy cars and related services are neither often nor generally subject to the use of sound marks.
Commonly, car marketing and sales rely on imagery of vehicles, striking words, stylised word
elements in banners, commercials, advertisement or combination of those elements with sound
effects.378 Eventually, the OHIM decided that it is unlikely that a consumer in such a situation
would perceive a sound sign as an indication of origin for a particular luxury good or service.
The OHIM applied a similar focus regarding the use of a sound sign in the case of
pharmaceutical products.379 The sound sign in question consisted of a tune, mentioned in the
previous section.380 Tune sequences are extensively used in advertisement for entertainment but
without clear content. In light of this, the OHIM deemed that for a tune to be capable of
performing the function of a trade mark, a tune has to qualify as extraordinary and remarkable.381

Assessment of the sound sign by reference to the relevant public: The assessment of a sound sign
with regard to the relevant goods and services forms, in many cases, the starting point for
assessing the relevant public’s interpretation of the sound sign. The perception of the sound sign
by the average consumer or the relevant public is partially considered in the assessment of the
sound sign per se. The assessment of the sound sign in this section puts the average consumer
377
OHIM Refusal of application for a Community trade mark und Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 01192357, Jaguar Land Rover Limited, at 2.
378
Id., at 3-4.
379
HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäß Artikel 7 GMV und Regel
11 Absatz 3 GMDV in Anmeldenummer No. 012674958, Bayer Aktiengesellschaft.
380
Id.
381
Id., at 2.

64
centre stage. In the case of the three discreet multi-layered synthesised sounds intended to be
used as a trade mark for luxury cars and related services, the OHIM elaborated on the role of the
relevant public in assessing the registrability of a sound sign.382 It held that the public is
accustomed to perceiving words or figurative signs instantly as trade marks identifying the origin
of a product. In the case of sound signs, the public may not be used to instantly perceiving sound
signs as trade marks.383 According to the OHIM, sound signs are not inherently capable of
distinguishing the goods of a particular undertaking.384 In other words, while the CTM
Regulation does not draw a distinction between different types of sign, it is, nevertheless,
important to take into account the habits of consumers with regard to particular trade marks. The
OHIM held that even if the relevant public would consist mainly or only of experts on luxury
cars, as the applicant suggested, a prima facie indistinct character of the sound sign could not be
overcome by assuming a public exhibiting unusually high attention towards the target products
(i.e. luxury cars).385 Regarding the tune for pharmaceutical products, the OHIM established a
high threshold for such a sound sign to function as a sound mark, as mentioned in the previous
section.386 Moreover, the OHIM held that such a tune must be assessed in relation to sounds that
the relevant public encounters in everyday life. In other words, the use-situation of the trade
mark is an additional and essential factor to be assessed.387 According to the OHIM, a sound
sign likely to be memorised incompletely can cause confusion among the relevant public and,
thus, lack the capability to distinguish with certainty the products from one undertaking from
those of others.388

To sum up the OHIM decisions discussed in the previous three sections, it can be concluded that
when attempting to register a sound mark, an applicant should make sure that the sound sign is

382
OHIM Refusal of application for a Community trade mark und Art. 7 CTMR and Rule 11(3) of the
Implementing Reg. in Application No. 01192357, Jaguar Land Rover Limited, at 4.
383
Id.
384
Id.
385
Id.; Cf. Judgment of 12 July 2012 in Case 311/11 P, Smart Technologies ULC v Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (Smart Technologies), [2012], in
particular Rec. 48 of the judgement.
386
HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäß Artikel 7 GMV und Regel
11 Absatz 3 GMDV in Anmeldenummer No. 012674958, Bayer Aktiengesellschaft.
387
Id.
388
Id.

65
not considered to be too brief or banal. Moreover, it seems that the OHIM requires a sound sign
to be memorisable to a substantial degree by the average consumer. This means an applicant
should ensure that his sound sign is not overly complex. Furthermore, he should evaluate if the
relevant public would perceive the sound sign clearly as an indication of origin and not either
ignore it or confuse it with other sounds in use-situations, i.e. marketing situations.
Finally, it is important to note that the OHIM provides guidance for slogans that will likely
be applied to sound marks, particularly jingles – slogans in the form of sound marks.389 Slogans
are considered non-distinctive when the relevant public perceives them as a mere promotional
formula.390 They are deemed to be distinctive only if, apart from their promotional function, the
relevant public perceives them as an indication of origin of the products in question.391 An
applicant submitting a jingle for registration is well advised to make sure that the sound sign
complies with the criteria outlined by the OHIM in its guidelines for assessing the distinctive
character of slogans.392

a) Switzerland
Swiss trade mark legislation does not differentiate between non-distinctive, descriptive or
customary signs as the CTM Regulation and the TM Directive do. Those concepts are all
covered by the notion of signs that are in the public domain in Article 2(a) of the TmPA.
Switzerland applies the notion of fehlende konkrete Unterscheidungskraft which equals is equal
to the concept of non-distinctiveness in the EU.393 Until 2009, sound signs were considered in
Switzerland to be distinctive only if they contained textual elements.394 The Federal Supreme
Court concluded in Melodie mit sieben Tönen that the melody applied for registration was
distinctive and that the IGE wrongly denied its registration.395 The court further elaborated on
the requirements for a sound sign to perform the function of a trade mark particularly, the
capability to distinguish and to act as an indicator of origin. Eventually, the court formulated
important guidance for assessing a sound sign’s distinctiveness in Switzerland. The court

389
See supra at 9.
390
OHIM Examination Guidelines, supra note 184, at 21.
391
Id.
392
Id.
393
For more on examination of distinctiveness, see IGE Trade Mark Guidelines, supra note 205 at 85.
394
Bundi, supra note 9.
395
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.7 of the judgement.

66
especially clarified how the sound sign per se and the use-situation affect and determine
distinctiveness.

The sound sign per se: The court held that for a sound sign to perform the function of an
indicator of origin it is not necessary for it to be exactly reproducible by the relevant public.396 It
is sufficient if a sound sign can simply be recognised by the relevant public.397 The court
acknowledged that sound signs might differ in the way the relevant public recognises them.398 In
that regard, it put recognisability and distinctness into a relationship with each other. The Swiss
Federal Supreme Court acknowledged the fact that short, catchy and memorable melodies can,
with less effort, be recognised by the relevant public.399 Sound signs that are melodious for the
human ear are easier to memorise and, according to the court, possess thereby generally a higher
distinctiveness. On the opposite side are signs that are not perceived as melodious for the human
ear. They are not as easy to remember and generally possess lower distinctiveness. The Federal
Supreme Court concluded that catchiness and memorability are likelier to occur with sounds that
have a simple structure and which are similar to entertainment music.400 A larger part of average
consumers would then be able to understand and memorise them.401
While the Federal Supreme Court pointed out that the level of distinctiveness may vary
depending on the sound sign, it objected to the IGE’s requirement that a sound sign without
textual elements display an unusual and distinctive character.402 The court found IGE’s approach
unacceptable because the applicant would have to go beyond what is usual and expected to make
a clearly distinctive sound sign.403 In an analogy to word marks, it pointed out that sound signs
should not be assessed differently with regard to the combination of tunes than word marks with
regard to the combination of letters.404 A sound sign should be assessed on a case by case basis
in relation to the product it designates, in order to establish whether it is distinctive or not.405

396
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.3 of the judgement.
397
Id.
398
Id.
399
Id.
400
Id.; Bahner, supra note 21, at 238.
401
Id.
402
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.2 of the judgement.
403
Id.
404
Id.
405
Id.

67
The use-situation: With regard to the use-situation, the Federal Supreme Court held that for a
sound sign to perform the function of an indicator of origin, simply referring to the use of a
sound sign in advertisement is not sufficient to deny it the capability of functioning as a trade
mark.406 In that context, the court emphasised that sound signs are increasingly used to identify
goods and services in relation to computers, computer software or other electronic devices as
well as in TV and radio advertisements or on the Internet.407
According to the court, the use of a melody in an advertisement qualifies as trade mark
use.408 Even a very short melody could be understood by the relevant public as an indication of
origin and thus, be suitable to distinguish the products from one undertaking from those of
another undertaking.409 However, the Federal Supreme Court stressed that to qualify as a trade
mark, it is necessary that […] the sound sign […] is used in the usual course of trade, typically,
at the beginning or end of an advertisement.410 It made an analogy to textual or visual marks.
Those trade marks are not perceived by the relevant public as trade marks when published on the
bottom or back of a product, nor in the small print describing a product.411 While a sound sign
may, in principle, be capable of distinguishing, to qualify as a trade mark it also has to be
perceived by the relevant public as a clear indication of origin with no additional mental
effort.412 This means that a sound sign has to be used in a way that it establishes a dialogue
between a manufacturer and a consumer.413

The Federal Supreme Court’s decision has some notable implications for potential sound mark
applicants. An applicant should ensure that his sound sign is capable of establishing a dialogue
between the consumer and the trade mark owner. It might be preferable to rely on a sound sign
that is easily memorised by the relevant public. However, there is no requirement that the public
must be able to memorise the sound sign, simple recognition suffices. Finally, an applicant is

406
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.2 of the judgement.
407
Id.
408
Id.
409
Id.
410
Id.
411
Id.
412
Id., in particular Rec. 2.5.1 and 2.56 of the judgement.
413
The BGER referred here to Art. 11 of the TmPA which stipulates that a trade mark is protected if it is
used in in relation to the goods or services for which it is claimed.; Cf. supra at 25.

68
well advised to assess if the sound sign would be perceived by the relevant public as a clear
indication of origin without additional mental effort.
Finally, an applicant whose sound mark is dubious in terms of distinctiveness might benefit
from a more lenient examination by the IGE thanks to the Federal Supreme Court’s decision in
Melodie mit sieben Tönen. The court reminded the IGE that a trade mark can be contested
ultimately in a civil proceeding.414 As a consequence, it held that, in case of doubts, the IGE
should register a sound mark and leave the ultimate decision to the courts, rather than declining
trade mark protection.415 Simply put, the Federal Supreme Court encourages a registration
approach towards sound marks that can be summarised as in dubio pro rogatore.

b) United States
Contrary to the CTM Regulation, the Lanham Act does not explicitly refer to distinctiveness.
Nevertheless, a sign must be distinctive in order to be registered on the Principal Register.416
This has been held by the TTAB also with regard to sound signs in In re General Electric
Broadcasting Company, Inc.417 In that regard, the USPTO distinguishes two categories of sound
signs: sound signs that are unique, different or distinctive and sound signs that resemble or
imitate commonplace sounds.418 Examples of commonplace sounds include the sounds made by
acoustic alarms.419 While the first category can be directly registered on the Principal Register,
the second category needs to acquire a secondary meaning.420 In the latter case, a registration
must be supplemented by evidence.421
In re General Electric Broadcasting Company, Inc., is one of the most interesting cases in
which a sound sign was assessed for distinctiveness. In fact, it is considered a landmark case for
sound marks in the US.422 The TTAB had to decide if the examining attorney of the USPTO had
correctly denied the registration of a ship’s bell clock as a trade mark on the Principal Register

414
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.3 of the judgement.
415
Id.
416
See Hunter, supra note 165, at 148-149.
417
See In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3
418
Id.
419
See In re Powermat Inc. 105 UPSQ2d 1789 (TTAB 2013).
420
Id.; See supra at 39.
421
Id.
422
See supra at 32.

69
on the basis of non-distinctiveness. While the TTAB confirmed the decision, it also elaborated
on the requirements for a sound sign to perform the function of a trade mark. 423 Unlike the
Federal Supreme Court in Switzerland, the TTAB did not explicitly discuss the use of a sound
sign to establish a dialogue between a manufacturer and a consumer. However, the TTAB held
that sound signs should be treated with caution when judging their capabilities to act as indictors
of origin.424 Moreover, it stated that the criteria for registration of sound marks must be
somewhat different from those applied to the average trade mark.425 Whether or not the sound
sign can function as an indicator of origin concerns the conditions under which a sound mark is
used and the lasting impression that a sound sign should have upon consumers.426 According to
the TTAB, a sound sign may, under certain conditions, work as an indication of origin:427

[…], at least as far as services are concerned where the traditional concept of affixation of a
trademark has not been ingrained or, in fact, is not practical or possible, likewise function as
source indicators in those situations where they assume a definitive shape or arrangement and
are used in such a manner so as to create in the hearer's mind an association of the sound with
a service. (emphasis added)

The phrase, in situations where they assume a definitive shape or arrangement, stipulates that a
sound sign should be perceived by consumers as a defined entity. The subsequent phrase, used in
such a manner so as to create in the hearer's mind an association of the sound with a service,
refers to establishing a dialogue between the manufacturer and the consumer. Both are essential
criteria for a sign to be capable to function as a trade mark. 428 The TTAB did not specify the
conditions when the use of a sound sign could allow the association between the sound and the
service in a hearer’s ear. It did, however, refer to Trademark Manual of Examining Procedure
(TEMP) which stipulates that an applicant has to demonstrate that a trade mark is or will be used
in commerce either in the sale or in the advertising of services.429

423
See In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3.
424
Id., para. 2.
425
In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3.
426
Id.
427
Id.
428
Cf. supra at 25.
429
See § 1301.4(a) and (b) of the TMEP.

70
 The TTAB moreover held that not only visual trade marks may differ in creating […] a
lasting impression upon a purchaser or prospective purchaser encountering those marks in the
marketplace.430 This differentiation also applies to sound marks.431 Some sound signs can be so
inherently different or distinctive that consumers easily remember them. They can be recognised
and associated with the product with which they were associated when heard.432 Other sound
signs can be less distinctive or be even devoid of any distinctiveness. 433 Because of this, the
TTAB introduced an important conceptual distinction for sound signs which is still valid today:
unique, different, or distinctive sound signs and commonplace sounds or sounds to which
listeners have been exposed under different circumstances. The first are directly registrable on
the Principal Register.434 Signs from the second group require supportive evidence to be
registered.435 This was also the case with the sound of a ship’s bell in In re General Electric
Broadcasting Company, Inc. The TTAB held that refusing registration did not mean that such as
sound sign would be incapable of functioning as an indicator of origin in the environment of
radio broadcasting.436 However, the evidence provided by the applicant indicating that the sound
sign was performing the function of a trade mark was deemed insufficient.437 In other words, the
applicant failed to show that the sound sign had acquired second meaning which would allow
registration on the Principal Register, a concept that was discussed earlier with regard to
acquiring distinctiveness.438
In summary, In re General Electric Broadcasting Company, Inc. established that sound signs
in the US can be registered on the Principal Register. It acknowledged that while some sound
signs may be distinctive, others might not be. However, even for the latter, registration is
possible if they manage to acquire secondary meaning, i.e. acquire distinctiveness. This means
an applicant with a non-distinctive sound sign should opt for registration on the Supplemental
Register, while expecting the sign to acquire distinctiveness over time. Later, the applicant could
submit the sign, backed with sufficient evidence, for registration on the Principal Register.

430
In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978), para. 3.
431
Id.
432
Id.
433
Id.
434
Id.
435
Id.
436
Id.
437
Id.
438
See supra at 39.

71
Despite this opportunity, US settled case law indicates that direct registration on the Principal
Register may also require an assessment of distinctiveness.439 In that regard, the US system
seems to fundamentally differ from the EU or Swiss trade mark system.

6. Other Absolute Grounds for Refusal

There are even more absolute grounds for refusal stipulated in Article 7(1). Those grounds
cannot be remedied by acquitting distinctiveness based on Article 7(3) of the CTM Regulation.
As such, those grounds are addressed only briefly in this study.440 Article 7(1)(e) is not relevant
for sound signs as it concerns shapes and is thus directed at three dimensional marks. Article
7(1)(f) might occasionally apply in case a sound sign is considered to offend generally accepted
moral principles.441 This might be the case when sound marks consist of a combination of sound
and text, for example racist songs or where sounds consist of war noises or noises made by
persons in agony. In addition, nauseous noises, such as farts or burps or noises with a sexual
connotation could be considered to offend moral principles. However, it is important to notice
that offences against moral principle arise not of the sound itself but from the relationship
between the sound sign and the product it designates.442 Article 7(1)(g) might occasionally be
applied in case a sound sign is considered to be deceptive. This could be the case with a sound
sign consisting of a spoken text with an Italian accent for pasta which is de facto produced in
Germany.443 Such a sound sign could be considered by the OHIM to be deceptive with regard to
the geographical origin of the product. Article 7(1)(h) refers to Article 6ter of the Paris
Convention. Article 6ter of the Paris Convention protects the flags and emblems of states that are
members of the Paris Convention, as well as the names and emblems of international
intergovernmental organisations against unauthorised registration and use as trade marks. As it
refers almost entirely to visual signs, it is unclear how Article 7(1)(h) would apply to sound

439
See for example: In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); Kawasaki Motors
Corp. U.S.A. v H-D Michigan Inc., 43 USPQ2d 1521 (TTAB 1997); Ride the Ducks LLC v Duck Boat
Tours (2005 US Dist LEXIS 4422 (ED Pa), 2005 US Dist LEXIS 8162 (ED Pa, April 22 2005), 2005 US
App LEXIS 13554 (3d Cir, July 6 2005), para. 7.
440
For more on signs which are not registrable on policy grounds see also Philips, supra note 15, at 67-73
(2003).
441
Kortbein, supra note 21, at 211; Foerstl, supra note 21, at 103; Suter-Sieber, supra note 21, at 108.
442
Suter-Sieber, supra note 21, at 108.
443
Id., at 102.

72
marks. It might require an OHIM or CJEU decision to expand the application of Article 71(1)(h)
to anthems within the EU, for example. However, such cases might also fall under Article 7(1)(f)
and be treated materially as contrary to public policy.444 The Articles 7(1)(i) to (k) can be
considered irrelevant for sound marks.
Switzerland refers to those other grounds for refusal in Article 2 of the TmPA. According to
Article 2(c), misleading signs and (d) signs contrary to public policy, morality or applicable law
are excluded from trade mark protection. US trade mark legislation refers essentially to the same
instances in the Lanham Act. However, in comparison, it provides a much more detailed list of
examples.445 Given that Switzerland and the US are both members of the Paris Convention, it
can be expected that similar cases to those stipulated in Article 7(1)(e) to (f) of the CTM
Regulation would most likely be treated in their jurisdiction in a similar manner as in the EU.

II. Relative Grounds for Refusal

In addition to absolute grounds for refusal, the CTM Regulation also lists relative grounds for
refusal. Those grounds are related to the exclusive right that the CTM confers to its owner.446 In
the past, examiners of the national trade mark registries checked if a trade mark was already on
the register to see if a new sign should be refused registration as trade mark.447 This practice has
changed in EU member states as OHIM itself only undertakes examinations of new CTMs on
absolute grounds.448 Under those circumstances, it is a trade mark owner’s responsibility to
oppose, based on its earlier right, an application for registration of a confusing similar trade
mark.449
Addressing the subject of relative grounds for refusal would go beyond this study’s scope.450
So far, none of the sound mark applications for CTM have been opposed on relative grounds for
refusal.451 One reason might be that contrary to visual or word marks, the universe of sound
marks is still characterised by a high availability of strong sound signs. In addition, audio

444
Suter-Sieber, supra note 21, at 108.
445
See 15 U.S.C § 1052(a).
446
C. Seville, supra note 350, at 253-269 (2009).
447
Waelde et al., supra note 69, at 561.
448
Id.
449
Id.
450
For more on relative grounds for refusal see Philips, supra note 15, at 307-359 (2003).
451
As of October 28, 2015.

73
branding is a complex and expensive endeavour. Under those circumstances, achieving a high
level of distinctiveness in relation to existing sound marks is likely to be an important driver for
an undertaking endeavouring to use a sound mark.452

III. Conclusions
The second research question guiding this study was: How do the necessary capabilities of a
sign to perform the function of trademark apply to sound signs and how are they reflected in
OHIM’s registration practices? In particular, how does OHIM conceptualise the notions of
descriptiveness and non-distinctiveness as important absolute grounds for refusal and do
differences exist with regard to other jurisdictions?

In regard to this question, we can therefore conclude that, based on the examined OHIM
decisions, a certain registration practice for sound marks has evolved since it became possible to
submit sound files. This is reflected in the decisions that the OHIM provided in those cases it
declined registration. Particularly impactful were those decisions related to Article 7(1)(b) on
non-distinctiveness, i.e. the majority of the OHIM decisions. Those decisions have become more
structured over time, reflecting the development of a certain assessment practice with regard to
sound marks that can be illustrated using a funnel of causality.453 The OHIM’s assessment
procedure as illustrated below clearly reflects how the essential capabilities for a sign to perform
the function of a trade mark also do apply to sound signs.

452
For more on audio branding, see supra at 8.
453
A funnel of causality is a concept used to explain decision making among large groups of people. In
the case of the OHIM decisions it is not a large group of people but rather a community of experts
drawing on similar arguments that are in the focus. See A. Campbell, A problem to be explained:
motivational differences by time of vote Dec., in A. Campbell et al. (eds.), The American Voter (1980).

74
Figure 10 Funnel of causality: Illustrating the OHIM’s assessment practice

The OHIM assesses a sound sign (i) per se, (ii) vis-à-vis relevant goods and services and (iii)
vis-à-vis the relevant public. This determines the capability of a sound sign to communicate and
to distinguish and, ultimately, to perform the function of a trade mark which in turn means
performing the function of an indication of origin.454 The capability to be represented graphically
is no longer relevant as today sound marks can be registered as CTMs on the basis of sound
files.455
The OHIM conceptualises the notions of descriptiveness and non-distinctiveness, two
important absolute grounds for refusal, based on multiple questions. The following table
summarises those main questions.456

454
See supra at 25.
455
See supra at 31.
456
An applicant for a sound mark should preferably address them in advance to reduce the risk that his
sound sign would be denied registration on the basis of non-distinctiveness.

75
I. Assessment of the sound sign per se II. Assessment of the sound sign by reference to
What is the perception of the sound sign prima the relevant product
face? How are the sound signs used in marketing, sales or
 Multiple perceptions? distribution situation?
 Originality (remarkable, unusual)?  Are those situations characterised by the use of
 Memorability (recallable)? sound signs?
 Duration of sign?  Do consumers expect a sound sign to be used as
a trade mark?
 The use of what kind of signs is characteristic to
designate the relevant product?
 Noticeable differences compared to other sound
signs in the same situation?
 Would an average consumer perceive the sound
sign as an indication of origin in relation to the
product?

III. Assessment of the sound sign by reference to the relevant public

How will the perception of the sound sign by the relevant public likely be?
 How does the perception of the sound sign relate to sounds in everyday life?
 Is the relevant public able to perceive the sound sign as an indication of origin?
 Is the sound sign used in the current commercial practice as an indication of origin?

Figure 11 Assessing distinctiveness: The three dimensions based on OHIM practice

Finally, do differences exist between the OHIM’s conceptualisation of descriptiveness as well as

non-distinctiveness with regard to other jurisdictions? The comparison with other jurisdictions
shows much similarity concerning the conceptualisation but, nevertheless, also some differences.
Compared to Switzerland, the OHIM seems to apply a slightly stricter approach to the concepts
of descriptiveness and distinctiveness.
Both apply a similar approach with regard to descriptiveness, in the sense that a sound sign is
considered descriptive if it can semantically rise to a particular association of ideas that can be
considered descriptive with regard to the good or service it designates. However, differences
exist with regard to how clear those association of ideas have to be to be considered descriptive.
The case in which the OHIM denied registration of a sound sign on the ground of descriptiveness
might have been treated differently in Switzerland.457 OHIM likely declined the sound sign on
the basis that it resembled the sound of an engine reviving-up. It would, thus, semantically have
given rise to an association with the class of goods and services for which the sign was supposed

457
CTM 012074241.

76
to be registered, i.e. vehicles. In Switzerland, the same sound sign could probably have obtained
registration as, according to the Federal Supreme Court decision in Melodie mit sieben Tönen,
the relevant public must understand the descriptive meaning of the sound sign directly, effortless
and without using fantasy. 458
A similar observation applies to the notion of distinctiveness. Again, the OHIM and
Switzerland seem to apply a similar conceptual approach. However, based on the examination of
OHIM decisions and in light of the decision of the Swiss Federal Supreme Court, one difference
seems to exist. In some of the cases, the OHIM decided against registration of sound signs citing,
among other reasons, the short duration of the sign. It is possible that in Switzerland the
characteristic of those sound signs (here the duration) would have been treated less strictly.
According to the Federal Supreme Court decision in Melodie mit sieben Tönen it would be
enough if a sound sign can simply be recognised again by the relevant public.459 In other words,
the benchmark for recognition of a sound signs by the relevant public seems to be lower in
Switzerland’s when compared to the OHIM’s practices. Moreover, Switzerland practices a
conceptual approach, with regard to distinctiveness, that can be summarised as in dubio pro
rogatore.460
The US system differs from the OHIM and Swiss system for trademark registration. It
provides the Supplemental Register with the basis to register signs that are considered non-
distinctive at the point of registration. This offers the owners of such signs limited legal
protection of their signs and the possibility to delay until their signs have gained enough
distinctiveness to be moved to the Principal Register.
With the notion of functionality, the US seems to address an issue that might also arise with
sound marks in the EU and Switzerland in the coming years. How to treat a sound sign which
could be considered a feature of the product it designates? In the light of technological
innovation, it may one day be necessary to exclude certain sound signs from trade mark
protection for which monopolisation would go against public interest. An example could be the
registration of a particular sound sign for a medical product that both functions as an indication
of origin and also carries a particular functional value that should not be denied to other
undertakings out of public interest. One might think of a cardiac pacemaker that emanates a
sound signal indicating the urgency to apply a defibrillator to the carrier of the pacemaker. One

458
BGE 135 III 359 E. 3.2, Melodie mit sieben Tönen, in particular Rec. 2.5.3 of the judgement.
459
Id.
460
See supra at 57.

77
could also think of a sophisticated and distinctive sound sign which elderly people are
particularly able to distinguish from ordinary noises in their living environment, such as the
sound of various other electronic devices. Such a sound sign might not be considered a
customary sign according to Article 7(1)(d) nor would it fall under Article 7(1)(f) and be denied
registration on public policy grounds. Two potential approaches could resolve that particular
issue, which can be illustrated along a timeline referring to the point of registration.
One approach to resolve the issue could be to introduce a similar clause as Article 7(1)(e)
limiting trade mark protection for certain shapes.461 Akin to the notion of functionality in the US,
falling under an article similar to Article 7(1)(e) would not be remedied by acquiring
distinctiveness. Such a clause, explicitly limiting trade mark protection for certain sound signs, is
likely to contribute to legal certainty for sound marks. An alternative would be to leave the issue
open to the CJEU to decide, for example on the basis of anti-competitive behaviour or on the
basis of a restriction to the free movement of goods and services.462 However, it cannot be ruled
out that the CJEU would resort to a similar concept of functionality as the US as it would have
the advantage to reconcile trade mark legislation with competition law.463
Finally, it can be concluded that CTM registration in the EU would substantially benefit from
more guidance on how absolute grounds for refusal should be understood with regard to sound
signs. This would close a considerable blind spot in the OHIM Examination Guidelines.

461
The author is aware that Article 7(1)(e) with regard to shapes is meant to delimiting those subject
matters falling under trade mark legislation from those falling under design law. On the overlapping of
trade mark and design law see also A. S. Nemes & A. Carboni, Overlapping Rights in Designs,
Trademarks and Trade Dress, in N. Wilkof & S. Basheer (eds.), Overlapping Intellectual Property Rights,
at 251-275 (2012).
462
See G. Ghidini, The Bride and the Groom. On the Intersection between Intellectual Porperty and
Antitrust Law, in G. Caggiano et al. (eds.), Competition Law and Intellectual Porperty, A European
Perspective (2012); C. M. Villarejo & T. Kramler, Intellectual Proprty Rights and Competition Rules, A
Complex but Indispensable Coexistence, in S. Anderman & A. Ezrachi (eds.), Intellectual Property and
Competition Law (2011).
463
See supra at 39.

78
E. The New TM Directive and Sound Marks
As stated at the beginning, this study briefly touches upon the difference in registration practice
between the OHIM and the EU member states. This is done in context of the new Trade Mark
Directive (TM Directive 2016) expected to enter into force in the second half of 2016.464
So far, the situation in the EU with regard to sound mark registration is rather paradoxical.
The CTM protects a broader amount of sound signs than the harmonised trade mark legislation
does at EU member state level. This is similar to the situation a couple of years ago in
Switzerland concerning three-dimensional trade marks. Applications for trade mark protection
submitted on the basis of the Madrid System could obtain protection earlier than those applicants
using the national registration process. Until now, sound mark examination in EU member states
still relied on the requirements stipulated in Shield Mark. For example, a sound mark can only be
registered if it can be graphically represented by musical notation.465 This limits the registration
of sound marks to melodies with or without textual content. If an applicant wants to register a
noise in the EU he has to apply for a CTM allowing registration of a sound mark on the basis of
a sonogram together with a sound file.
This process can be expected to change with the adoption and entering into force of the TM
Directive 2016.466 The definition of signs of which a trade mark may consist of, as stipulated in
Article 2 of the TM Directive, is expected to explicitly incorporate the notion of sounds.
Moreover, graphical representation is expected to be replaced by the notion of […] being
represented in a manner which enables the competent authorities and the public to determine the

464
As of November 24, 2015.
465
See, e.g. Website of the Intellectual Property Office UK, Manual of Trade Marks Practice,
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/454221/Manual-of-trade-
marks-practice.pdf [10.08.2015].
466
See Proposal for a Directive of the European Parliament and of the council to Approximate the Laws of
the Member States Relating to Trade Marks (Recast) (COM(2013) 162 final), (TM Directive 2016),
http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:52013PC0162& from=EN
[30.10.2015]. This may be interpreted as a third stage in the construction of Community intellectual
property legislation. The entry into force of the Treaty of Lisbon on 1 December 2009 has opened up new
perspectives. The Treaty has set up a specific legal basis for the creation of European property rights. In
accordance with Article 118, the EU can now provide for a uniform protection of intellectual property
rights through the Union. See C. Geiger, The construction of intellectual property in the European Union:
searching for coherence, in C. Geiger, Constructing European Intellectual Property, Achievements and
New Perspectives, at 14 (2013).

79
precise subject of the protection afforded to its proprietor.467 This is likely to broaden the
permissible means of representation.468 The acceptance of a sonogram together with a sound file
would extend the notion of sound mark in the meaning of the TM Directive. It would provide the
basis to register noises at a member state level. From a technical point of view, replacing
graphical representation by sound files would replace an outdated requirement and enhance legal
certainty.469 This is likely to increase the registration of sound marks in the EU.

F. Conclusions
The amendment to the Implementing Regulation for Community Trade Marks, adopted in 2005,
was expected to facilitate the registration for sound marks as CTMs in the EU. This study
investigated the protection of sound marks in the form of CTMs.
With regard to the first research question, how has the notion of sound mark as a legal
concept changed from the past to today, this study concluded that by defining graphical
representation for sound signs on the basis of sonograms and MP3 sound files the scope of sound
marks, in the meaning of Article 4 of the CTM Regulation, was substantially increased. It made
it possible to register melodies as well as noises. Although musical notation has its own
deficiencies, such as its inability to capture timbre, this new OHIM registration practice can be
considered to have enhanced legal certainty in general, regardless of the particular sound sign at
hand. Moreover, in light of the entering into force of the revised TM Directive in 2016, this
practice is likely to be soon applied at member state level as well.
The second research question guiding this study was: How do the necessary capabilities of a
sign to perform the function of trademark apply to sound signs and how are they reflected in
OHIM’s registration practices? In particular, how does OHIM conceptualise the notions of
descriptiveness and non-distinctiveness as important absolute grounds for refusal and do
differences exist with regard to other jurisdictions? This study concluded that, based on the

467
The latest on European proposals to modernise trade mark law and procedure, Taylor Wessing LLP,
http://united-kingdom.taylorwessing.com/fileadmin/files/docs/EU-proposals-to-modernise-TM-law.pdf
[10.08.2015].
468
Some question whether these new provision will be workable in practice, in particular, with regard to
the other non-traditional marks, such as olfactory signs. D. Fields & H. Sheraton, European Commission
Proposes Reform of European Trade Mark System, 35 EIPR 10, at 564 (2013).
469
Id.

80
examined OHIM decisions, registration practice and thus, a way to conceptualise particularly the
notions of descriptiveness and non-distinctiveness concerning sound marks has evolved over
recent years. This has been especially the case since it became possible to submit sound files in
2005. In comparison with other jurisdictions, in particular Switzerland, it seems that the OHIM
applies a slightly stricter conceptual approach with regard to notions of descriptiveness and non-
distinctiveness as absolute grounds for refusal. In general, CTM registration in the EU would
substantially benefit from more guidance on how absolute grounds for refusal have to be
conceptually understood with regard to sound signs. This would address a blind spot in the
OHIM Examination Guidelines.
Finally, the US experience in registering sound marks, in particular the case involving Harley
Davidson, indicated that sound mark registration in the EU might sooner or later have to address
the issue of functional sound signs. In the light of technological innovation, it might one day be
necessary to exclude certain sound signs from trade mark protection for which monopolisation
would go against the public interest.

81
 G. Bibliography

Books

S. Anderman, EC Competition Law and Intellectual Property Rights, Oxford University Press
(1998)

S. Bahner, Der Schutz akustischer Marken nach dem deutschen Markengesetz und der
europäischen Gemeinschaftsmarkenverordnung, Duncker & Humblot (1. Auflage) (2005)

A. Bender, Die grafische Darstellbarkeit bei den neuen Markenformen, in V. Bomhard et al.
(eds.), Harmonisierung des Markenrechts: Festschrift für Alexander von Mühlendahl zum 65.
Geburtstag, Carl Heymann Verlag (2005)

L. Bently & B. Sherman, Intellectual Property Law, Oxford University Press (3rd edition) (2008)

D. E. Bouchoux, The Laws of Trademarks, Copyrights, Patents, and Trade Secrets, Delmar,
Cengage Learning (2013)

C. Geiger, Constructing European Intellectual Property, Achievements and New Perspectives,

Edward Elgar Publishing Ltd. (2013)

C. Geiger, The construction of intellectual property in the European Union: searching for
coherence, in C. Geiger (eds.), Constructing European Intellectual Property, Achievements and
New Perspectives, Edward Elgar Publishing Ltd. (2013)

G. Ghidini, The Bride and the Groom. On the Intersection between Intellectual Property and
Antitrust Law, in G. Caggiano et al., Competition Law and Intellectual Property, A European
Perspective, Wolter Kluwer Law & Business (2012)

A. Campbell, A problem to be explained: motivational differences by time of vote Dec., in A.

Campbell et al. (eds.), The American Voter, University of Chicago Press (1980)

T. Cook, EU Intellectual Property Law, Oxford University Press (2010)

C. M. Correra & A.. A. Yusuf, Intellectual Property and International Trade, The TRIPS
Agreement, Wolters Kluwer Law & Business (2nd edition) (2008)

82
W. Cornish & D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied
Rights, Sweet & Maxwell (5th edition) (2003)

R. C. Dorr & C. H. Munch (eds.), Protection of Trade Dress, John Wiley & Sons (1992).

S. Enchelmaier, Intellectual property, the internal market and competition law, in J. Drexl,
Research Handbook on Intellectual Property and Competition Law, Edward Elger Publishing
Ltd. (2008)

U. Foerstl, Der Schutz akustischer Kennzeichen nach dem MarkenG, PETER LANG
Europäischer Verlag der Wissenschaften (2003)

C-P. Fritz, Gegenwart und Zukunft von Markenformen unter besonderer Berücksichtigung
akustischer Zeichen: Registrierbarkeit von Markenformen im deutschen, europäischen und
internationalen Recht, Universität Tübingen (1992)

P. Goldstein & R. A. Reese, Copyright, Patent, Trademark and Related States Doctrines, Cases
and Materials on the Law of Intellectual Property, Foundation Press (7th edition) (2012)

U. Hildebrandt, Marken und andere Kennzeichen, Carl Heymann Verlag (2. Auflage) (2009)

S. W. Halpern et al., Fundamentals of United States Intellectual Property Law, Copyright,

Patent, and Trademarks, Wolter Kluwer Law & Business (4th edition) (2012)

D. Hunter, The Oxford Introductions to U.S. Law, Intellectual Porty, Oxford University Press
(2012)

N. Ianeva, Registration of Non-Conventional Signs Under the Community Trademark Regime –

Schriften zur Rechtswissenschaft, Vol. CII (2008)

C. Kortbein, Markenschutz für Hörzeichen, Probleme der praktischen Verwendung sowie des
Eintragungs-, Widerspruchs und Verletzungsverfahrens, PETER LANG Europäischer Verlag der
Wissenschaften (2005)

D. Keeling, Kerly's Law of Trade Marks and Trade Names, Sweet & Maxwell (15th edition)
(2014)

R. Landfermann, Handy-Klingeltöne im Urheberund Markenrecht – Schriften zum deutschen

und internationalen Persönlichkeits- und Immaterialgüterrecht, Band 17, V&R unipress (2006)

83
D. L. Lange et al., Intellectual Property Cases and Materials, American Casebook Series,
Thomson Reuters (4th edition) (2007)

R. P. Merges et al., Intellectual Property in the New Technological Age, Wolters Kluwer Law &
Business (2010).

A. Michaels & A. Norris, A Practical Approach to Trade Mark Law, Oxford University Press
(2010)

A. S. Nemes & A. Carboni, Overlapping Rights in Designs, Trademarks and Trade Dress, in N.
Wilkof & S. Basheer (eds.), Overlapping Intellectual Property Rights, Oxford University Press
(2012)

J. Novak, Die Darstellung von besonderen Markenformen, Hörmarke – Geruchsmarke –

Bewegungsmark, Stämpfli Verlag AG Bern (2007)

B. W. Pattishall et al., Trademarks and Unfair Competition, LexisNexis (5th edition) (2002)

J. B. Pegram & T. E. Spath, Doctrine of Functionality, in R. C. Dorr & C. H. Munch (eds.),

Protection of Trade Dress, John Wiley & Sons (1992).

J. Philips, Trade Mark Law, A Practical Anatomy, Oxford University Press (2003)

T. Prime, European Intellectual Property Law, Ashgate Darmouth (2000)

S. Sandri & S. Rizzo, Non-Conventional Trade Marks and Community Law, MARQUES (2003)

C. Seville, EU Intellectual Property Law and Policy, Elgar European Law (2009)

I. Suter-Sieber, Die Hörmarke: Schutzvoraussetzungen und Schutzinhalte nach schweizerischem

Recht, Stämpfli Verlag (1. Auflage) (2012)

A. Taubman et al., A Handbook on the WTO TRIPS Agreement, Cambridge University Press
(2012)

F. Thouvenin et al., Repetitorium Immaterialgüterrecht, orell füssli AG (2. Auflage) (2010)

P. Torremans, Holoyoak & Torremans intellectual property law, Oxford University Press (6 th
edition) (2010)

84
G. Tritton et al., Intellectual Property in Europe, Sweet & Maxwell (2nd edition) (2002)

C. M. Villarejo & T. Kramler, Intellectual Proprty Rights and Competition Rules, A Complex
but Indispensable Coexistence, in S. Anderman & A. Ezrachi (eds.), Intellectual Property and
Competition Law, New Frontiers, Oxford University Press (2011)

C. Waelde et al., Contemporary Intellectual Property, Law and Policy, Oxford University Press,
(2011)

Articles

V. K. Ahuja, Non-traditional Trade Marks: new dimension of trade marks law, 32 EIPR 11, at
575-581 (2010)

R. A. Becker, Kennzeichenschutz einer Hörmarke, WRP, at 56-65 (2000)

D. R. Bumpus, Bing, Bang, Boom: An Analysis of in RE VERTEX Group LLC and the Struggle
for Inherent Distinctiveness in Sound Marks Made During a Products Normal Course of
Operation, 21 FEDCBJ 245 (2011)

M. Bundi, August Storck KG v Swiss Federal Institute of Intellectual Property: Switzerland:

Trade Marks – Registration of Acoustic Marks without Textual Elements, 31 EIPR 12, N84
(2009)

D. Fields & H. Sheraton, European Commission Proposes Reform of European Trade Mark
System, 35 EIPR 10, at 563-566 (2013)

U. Hildebrandt, Zum Begriff der grafischen Darstellbarkeit des Artikel 2 Markenrichtlinie,

Anmerkungen zu den Schlussanträgen zur Riechmarken-Vorlage des BPatG, 1 MarkenR, at 1-5,
(2002)

C. Hoffrichter-Daunicht, Grafische Darstellbarkeit von Hörmarken: Wo ist das Problem?

GRUR, at 935-936 (2007)

G. Humphreys, Non-Conventional Trademarks: An Overview of Some of the Leading Case Law

of the Boards of Appeal, 31 EIPR 9, at 437-448 (2010)

85
M. M. S. Karki, Non-Traditional Areas of Intellectual Property Protection: Colour, Sound,
Taste, Smell, Shape, Slogan and Trade Dress, 10 JIPR 11, at 499-506 (2005)

T. Kongolo, Intellectual Property and Misappropriation of the Public Domain, 33 EIPR 12, at
780-794 (2011)

D. Lyons, Sounds, Smells and Signs, 16 EIPR, at 541-543(1994)

S. Maniatis, Sent as Trademarks: Propertisation of Scents and Olfactory Property, Law and The
Senses, at 217-235 (1996).

L. Meyer, Urheber- und markenrechtliche Überlegungen zum Klingelton, 3 Medialex:

Zeitschrift für Medienrecht / Revue de droit des médias, at 149-154 (2003).

R. Sieckmann, Die Eintragungspraxis und –möglichkeiten von nicht-traditionellen Marken

innerhalb und ausserhalb der EU, MarkenR 1, at 236-266 (2001)

M. B. Sapherstein, The Trademark Registrability of the Harley-Davidson Roar: A Multimedia

Analysis, B.C. Intell. Prop. & Tech (1998)

S. Yavorsky, Ministry of Sound - OHIM and the Tarzan Yell, 19 EntLR 3, at 63-65 (2008)

W. Zhang, L. Wei & Y. Li, The Third Revision of Chinese Trademark Law - Analysis and
Comment, 45 IIC 5, at 556-586 (2014)

Newspapers, Blogs, Websites

A. Bella, Trademark registration: Some Sound Practical Tips for Canadians, The IPKat, 30
March 2012. http://ipkitten.blogspot.com/2012/03/trade-mark-registration-some-sound.html
[18.08.2015]

What is audio branding? Audio Branding Academy, http://audio-branding-academy.org

/aba/knowledge/what-is-audio-branding/ [18.08.2015]

Technical terms audio branding, Audio Branding Academy, http://audio-branding-academy.org

/aba/knowledge/what-is-audio-branding/ [18.08.2015]

86
J. Samson, Genre, Oxford Music Online. http://www.oxfordmusiconline.com/subscriber/
article/grove/music/40599 [03.11.2015]

H. Sutcliffe, Eco crisp packet is too noisy for consumers, 1 November 2010, The Guardian,
http://www.theguardian.com/sustainable-business/blog/eco-crisp-packet-too-noisy [18.08.2015]

Etihad Airways, Etihad Boarding Music, https://soundcloud.com/etihad-airways/etihad-

boarding-music or Cisco’s call manager default hold music,
https://www.youtube.com/watch?v=6g4dkBF5anU [18.08.2015]

Acoustic Innovation: e-sound by Audi, 9 April 2012, YouTube,

https://www.youtube.com/watch?v=HoEDLvQZg5I [18.08.2015]

Tarzan’s trade mark yell, Press Release CP/07/01, Website of the Office for Harmonisation in
the Internal Market (Trade Marks and Designs),
http://oami.europa.eu/en/office/press/pdf/051107.pdf [18.08.2015]

Website of the Office for Harmonisation in the Internal Market (Trade Marks and Designs),
13.2. What does the link between the Madrid Protocol and the CTM system mean?
https://oami.europa.eu/ohimportal/en/madrid-protocol#13.2 [18.08.2015]

Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks
and Designs) on Community Trade Marks, Part B, Examination, Section 4, Absolute Grounds
for Refusal (OHIM Examination Guidelines), Website of the Office for Harmonisation in the
Internal Market (Trade Marks and Designs), https://oami.europa.eu/tunnel-
web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Guidelines/05_part_b_exa
mination_section_4_absolute_grounds_for_refusal_en.pdf [18.08.2015]

Richtlinien in Markensachen, 1. Januar 2011 (IGE Trade Mark Guidelines), IGE,

<https://www.ige.ch/file admin/user_upload/Juristische_Infos/d/rlma/rlma_d.pdf> [18.08.2015]

J. O’Dell, Harley Davidson Quits Trying to Hog Sound, The Los Angeles Times, 21 June 2002.
http://articles.latimes.com/2000/jun/21/business/fi%AD431451/2 [18.08.2015]

Application by Harley-Davidson, Inc. to have the sound of their motorcycles trademarked, The
'Lectric Law Library, http://www.lectlaw.com/files/inp14.htm [18.08.2015]

87
807.09 “Drawing” of Sound, Scent, or Non-Visual Mark, Trademark Manual of Examining
Procedure (TMEP), http://tmep.uspto.gov/ [20.08.2015]

1212.03 Evidence of Distinctiveness under §2(f), Trademark Manual of Examining Procedure

(TMEP), http://tmep.uspto.gov/ [20.08.2015]

1209.01(c) Generic Terms, Trademark Manual of Examining Procedure (TMEP),

http://tmep.uspto.gov/ [20.08.2015]

Website of the Intellectual Property Office UK, Manual of Trade Marks Practice,
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/454221/Manual-
of-trade-marks-practice.pdf [10.08.2015]

The latest on European proposals to modernise trade mark law and procedure, Taylor Wessing
LLP, http://united-kingdom.taylorwessing.com/fileadmin/files/docs/EU-proposals-to-modernise-
TM-law.pdf [10.08.2015]

Case Law, Opinions, Decisions

The Court of Justice of the European Union (CJEU)

Judgment of the Court of 29 September 1998 in Case 39/97, Canon Kabushiki Kaisha v Metro-
Goldwyn-Mayer Inc., formerly Pathe Communications Corporation (Canon) [1998] ECR I-5507

Judgment of the Court of 17 October 1990 in Case 10/89 SA CNL-SUCAL NV v HAG GF AG,
Reference for a preliminary ruling: Bundesgerichtshof - Germany. (HAG GF AG) [1990] ECR I-
3711

Judgment of the Court of 4 May 1999 in Joined Cases 108/97 and 109/97 Windsurfing Chiemsee
(Windsurfing Chiemsee) [1999] ECR I-2779, at I-2779

Judgment of 20 September 2001 in Cases C-383/99 P, Procter & Gamble Company v Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (BABY-DRY), [2001]

Judgment of the Court of 4 October 2001 in Case 517/99, Merz & Krell GmbH & Co., Reference
for a preliminary ruling: Bundespatentgericht – Germany (Merz & Krell & Co.) [2001] ECR I-
6959

88
Judgment of 27 February 2002 in Case T-79/00, Rewe Zentral AG v Office for Harmonisation in
the Internal Market (Trade Marks and Designs) (LITE), [2002] ECR II-00705

Judgment of 12 December 2002 in Case 273/00, Ralf Sieckmann v Deutsches Patent- und
Markenamt (Sieckmann), [2002] ECR I-11737, at I-11737

Judgment of 6 May 2003 in Case 104/01, Libertel Groep BV v Benelux-Merkenburea (Libertel),

[2003] ECR I-03793

Judgment of 27 November 2003 in Case 283/01, Shield Mark BV and Joost Kist h.o.d.n. Memex
(Shield Mark), [2003] ECR I-14329

Judgment of 27 November 2003, Case T- 348/02, Quick restaurants SA / OHIM, (Quick), ECR
II-5071

Judgment of 25 January 2007 in Case 321/03, Dyson Ltd v Registrar of Trade Marks (Dyson),
[2007] ECR I-00687, I 712-728

Judgment of 12 July 2012 in Case 311/11 P, Smart Technologies ULC v Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (Smart Technologies), [2012]

Advocate General Georges Cosmas in Joined Cases 108/97 and 109/97 Windsurfing Chiemsee
(Windsurfing Chiemsee) [1999] ECR I-2779

Advocate General Ruiz-Jarabo Colomer in Case 273/00, Sieckmann, [2002] ECR I-11739

Office for Harmonization in the Internal Market (OHIM)

OHIM Decision of the Fourth Board of Appeal of 25 August 2003 in Case R 781/1999-4, Sound
Mark (Roar of a Lion)

OHIM Refusal of application for a Community trade mark und Article 7 of the Regulation and
Rule 11(3) of the Implementing Regulation in Application No. 004010336, Tellme Networks,
Inc. [2006]

OHIM Decision of the Fourth Board of Appeal of 27 September 2007 in Case R 295/2005-4,
Sound Mark (HEXAL)

89
OHIM Decision of the Fourth Board of Appeal of 27 September 2007 in Case R 708/2006-4,
Tarzan Yell, (Tarzan Yell)

OHIM refusal of application for a Community trade mark und Article 7 of the Regulation and
Rule 11(3) of the Implementing Regulation in Application No. 008293557, Koninklijke Philips
N.V. [2011]

HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäss Artikeln 7 der

Verordnung und Regel 11(3) der Durchführungsverordnung in Anmeldenummer No. 009980632,
GRUND & MOBIL VERWALTUNGS AG [2011]

HABM Vollständige Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäss

Artikeln 7 und 37 der Gemeinschaftsmarkenverordnung Nr. 207/2009 (GMV) und Regel 11(3)
der Durchführungsverordnung Nr. 2868/1995 (DV) in Anmeldenummer No. 11747045, Krinner
Innovation GmbH [2013]

OHIM Refusal of application for a Community trade mark und Article 7 CTMR and Rule 11(3)
of the Implementing Regulation in Application No. 011377074, CVS Pharmacy, Inc. [2013]

HABM Zurückweisung der Anmeldung einer Gemeinschaftsmarke gemäß Artikel 7 GMV und
Regel 11 Absatz 3 GMDV in Anmeldenummer No. 012674958, Bayer Aktiengesellschaft [2014]

OHIM Refusal of application for a Community trade mark und Article 7 CTMR and Rule 11(3)
of the Implementing Regulation in Application No. 01192357, Jaguar Land Rover Limited
[2014]

Federal Supreme Court of Switzerland

BGE vom 7. April 2009, 4A_566/2008 X. KG gegen Eidgenössisches Institut (IGE), BGE 135 III
359 E. 3.2, Melodie mit sieben Tönen

US Courts and Trademark Trial and Appeal Board (TTAB)

In re General Electric Broadcasting Company, Inc., 199 USPQ 560 (TTAB 1978)

90
American Diabetes Association v. National Diabetes Association, 533 F. Supp. 16 (E.D. Pa.
1981)

In re Morton-Norwich Prods Inc., 671 F2d 866 (CCPA 1982)

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n. 10 (1982)

Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d 1120 (Fed. Cir. 1994)

Qualitex Co. v. Jacobson Products Co., 34 USPQ2d 1 161 (S. Ct. 1995)

Kawasaki Motors Corp. U.S.A. v H-D Michigan Inc., 43 USPQ2d 1521 (TTAB 1997)

Honda Giken Kogyo Kabushiki Kaisha v v H-D Michigan Inc., 43 USPQ2d 1526 (TTAB 1997)

In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000)

Ride the Ducks LLC v Duck Boat Tours (2005 US Dist LEXIS 4422 (ED Pa), US Dist. LEXIS
8162 (ED Pa, April 22 2005), US App LEXIS 13554 (3d Cir, July 6 2005)

In re NV Organon, 79 USPQ2d 1639 (TTAB 2006))

Nextel Communications, Inc. v Motorola, Inc. (TTAB 2008)

In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009)

In re Powermat Inc. 105 UPSQ2d 1789 (TTAB 2013)

Legislation

International

Paris Convention as amended on September 28, 1979 (Paris Convention)

1957 Nice Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks as amended on September 28 1979 (Niece Agreement)

Trade-Related Aspects of Intellectual Property Rights. Ann. 1 C to the Agreement Establishing

the WTO as adopted on April 15 1994 (TRIPS)

91
1989 Protocol Relating to the Madrid Agreement Concerning the International Registration of
Marks as amended on November 12 2007 (Madrid Protocol)

European Union

Council Directive of 21 December 1988 to approximate the laws of the Member States relating
to trade marks 89/104/EEC, OJ 1989 L 40 / 1

Council Regulation 40/94, OJ 201994 L 11/1 (Community Trade Mark Regulation, CTM
Regulation 1994)

Commission Regulation 1041/2005, OJ 2006/1 (Community Trade Mark Implementing

Regulation, CTMI Regulation)

European Parliament and Council Directive 2008/95/EC, OJ 2008 L 299/25 (Trade Mark
Directive, TM Directive)

Council Regulation 207/2009, OJ 2009 L 78/1 (Community Trade Mark Regulation, CTM
Regulation)

Proposal for a Directive of the European Parliament and of the council to Approximate the Laws
of the Member States Relating to Trade Marks (Recast) (COM (2013) 162 final) (TM Directive
2016), http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:52013PC0162&
from=EN [30.10.2015]

Switzerland

Bundesgesetz über den Schutz von Marken und Herkunftsangaben vom 28. August 1992
(Markenschutzgesetz, SR 232.11), Federal Act on the Protection of Trade Marks and Indications
of Source, Trade Mark Protection Act (TmPA)

Verordnung über den Schutz von Marken und Herkunftsangaben (MSchV, SR 232.111),
Ordinance on the Protection of Trademarks (OPTm)

92
United States

Code of Laws of the United States of America 15 U.S.C. § 1051 et seq. Trademark Act of 1946
as amended (Lanham Trademark Act)

93