February 25, 1997
Sponsoring Committee: Issues and Policy Committee
WHEREAS, the recognition of, and the protection afforded to, sound trademarks varies from country to country; and
WHEREAS, such variation makes protection uncertain while sounds are being more frequently used to distinguish the goods and services of one business from another;
BE IT RESOLVED, that it is the position of the International Trademark Association that sound that is connected with a product or service may, in appropriate circumstances, serve as a trademark should be entitled to trademark recognition, protection and registration.
There is no international consensus on whether a sound is protectable as a trademark. Under most conventions and national statutory provisions, the definition of a trademark either encompasses sound as a trademark, or at the very least, does not exclude such marks. Recently, whether sound marks are protectable has become the focus of much debate in a number of countries. However, in only a very few countries have any standards or requirements for obtaining registration of sound trademarks been developed.
These standards have usually evolved based on the cases prosecuted, and since even in those countries the number of applications prosecuted have been very limited, any guidelines are not well developed. Those requirements that do exist usually require that the sound trademark be adequately represented in a graphic form and in some cases, must be supported by some evidence to demonstrate distinctiveness.
In several countries, recent trademark amendments expressly include sound in the definition of a trademark. These include the United Kingdom, Germany, Italy, New Zealand and Australia.
The Committee has considered the problems and issues that are associated with sound trademarks, such as the manner in which the mark needs to be used in association with goods or services, and in particular the principles of “connection” and “affixation”, articulation of the mark for registration, distinctiveness including functionality and consistency in use, and assessment of confusion. As outlined below, the Committee believes that the foregoing problems are not insurmountable, and except for articulation, are not unique and can be addressed by using traditional trademark principles. The Committee has therefore concluded that the above difficulties or concerns are not valid as reasons to preclude protection to and registration of sound trademarks.
The practice in many countries has shown that the absence of physical affixation due to the intangible nature of sound marks is not incompatible with trademark protection and can be accommodated, provided the sound is used so as to become connected with the goods and remains consistent. Affixation requirements in regards to sound marks should be satisfied so long as the mark is used in a manner that will directly connect or associate it with the product or service. This could be accomplished, for example, through advertising or use at the point of sale and in cases where the functionality doctrine permits, emission of the sound from the product itself.
As national trademark laws differ in their affixation requirements for use on goods, the Committee does not propose herein a defined affixation standard for international implementation. Instead, a general “product connection” requirement is proposed, so that a sound mark, which fulfils the source identifying function of a trademark and is directly connected with the product, will not be barred from registrability because of physical affixation requirements so strict that most sound marks would automatically be precluded from protection. Having established the general standard, related implementation issues governing how it is put into practice should be left to the domain of individual jurisdictions.
Graphic Representation and Search Problems
As indicated by the practice in some countries, search problems can be addressed by the use of audio tape and visually represented staff music specimens, as well as written definitions of the sound marks. Furthermore, as soon as the technology becomes more widely available, the problem of the need to be able to read music, and the issue of graphically representing the pitch and tone of a mark, which can currently be addressed by use of audio tapes, may be further addressed through the use of a computer generated full frequency plot, which would also facilitate computer searching. At the same time, since sound has no language barrier, some of the problems associated with the international searching of word marks do not exist with sound marks. However, since different jurisdictions will wish to adopt articulation requirements to their own systems, implementation issues relating to articulation also should be left to the domain of individual jurisdictions.
The functionality doctrine, in order to preclude adverse effects on competition, bars protection for something that is essential to the use and purpose of the article or which inherently effects its cost or quality. Functional sounds would be subject to the same exclusions or limitations as functional product configurations or generic word marks.
Difficulties in assessing confusion between two sound marks, or between a sound mark and a visual mark, can be dealt with using the reasoning and logic presently applied to other types of marks. Judging the aural impact of a mark and phonetic similarity in word marks already forms part of the assessment of trademark confusion and registrability in most jurisdictions and, in the case of sounds, is not confounded by language barriers. By applying fundamental principles, any vagueness or undo breadth in the description which renders the scope unclear, would render the mark unregistrable or the registration invalid or unenforceable. The onus would be on the applicant to ensure that the mark is graphically represented sufficiently to enable the sound to be clearly articulated. Competitors would have means to oppose or invalidate a registration for sound on the same grounds as other trademarks, e.g. functionality.
In summary, the Committee believes that it is necessary for the Board to formalize INTA’s fundamental principle of protectability of sound marks without, as indicated above, including related implementation issues such as specific articulation or affixation/product connection requirements.
Accordingly, the Committee requests that the Board of Directors adopt the foregoing resolution stating that sound trademarks that are connected with products or services should be protectable and registrable in the same way and subject to the same standards as any other trademark.