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14 October 2015Trademarks

AIPPI 2015: Beethoven, Tarzan and rooster calls

Non-traditional trademarks such as colours and sounds can offer applicants something different but registering them has its difficulties, the 2015 AIPPI World Congress has heard.

Speaking at the congress, currently taking place in Rio de Janeiro, lawyers gave a rundown of non-traditional marks and showed recently registered and famous examples.

Maria Scungio, speaking yesterday, October 13, told delegates that one of the best examples in recent times was Apple’s registration of a picture mark for the interior layout of its stores.

“Apple’s submission to the US Patent and Trademark Office (USPTO) was really something,” Scungio said.

“The details to back up its application were so detailed. Its file was the equivalent to a phone book and Apple had thought about everything, including the walls of the store, the placement of the interior tables and their proximity to the front door,” she added.

Apple’s application was approved by the USPTO last year, and the technology company left no stone unturned in its effort to obtain the registration, Scungio said.

Scungio then gave examples of sounds that have been registered as marks including a Tarzan-like call and the two-tone chime of Apple’s Siri voice recognition service.

Amazingly, Scungio said, the University of Arkansas was able to trademark its ‘calling the hogs’ chant used by its Arkansas Razorbacks American football team.

The trademark for the chant, which contains the lyrics “woo pig sooie”, was granted in 2014.

Elena Molina, founding partner of law firm Intangibles Legal in Spain, said that in the EU the “flagship” case for determining whether sounds can be registered is the Court of Justice of the European Union’s (CJEU) 2003 judgment in Shield Mark v Joost Kist, which is still applied today.

Between 1992 and 1999 Netherlands-based technology company Shield Mark had registered several sound trademarks at the Benelux Intellectual Property Office.

The trademarks were directed to the first nine notes of the musical composition "Für Elise" by Ludwig van Beethoven, as well as the crow of a rooster.

Most of the 14 applications consisted of the representation of the melody formed by the notes (graphically) transcribed on a stave. Three marks covered the sequence of musical notes (written as letters) but without any further descriptions.

The application covering the rooster call consisted of the onomatopoeic sound “kukelekuuu”.

Competitor Joost Kist, who owned a company called Memex, started a marketing campaign for a software program in 1995 using the first nine notes of "Für Elise" and the crow of the rooster.

Shield Mark sued Kist at the Gerechtshof Den Haag. Although the court accepted a claim based on the civil law of responsibility, it denied claims of trademark infringement, prompting Shield Mark to appeal against the decision.

The case then made it all the way up to the Supreme Court of the Netherlands, which asked the CJEU to rule on when trademarks can be accepted for sounds and, as a result, be used in litigation.

According to the CJEU’s 2003 judgment, the only applications that Shield Mark was able to enforce were those which showed the graphic representations alongside the applied-for sound mark, such as the stave.

The trademark protecting the onomatopoeic representation of the rooster was rejected because it could not be proven whether the relevant public could determine that the onomatopoeia was the trademark or the sound itself.

Molina added: “A trademark application for a sound that is not in itself capable of being visually perceived will be accepted, provided that it can be represented graphically as well ... and that the representation is clear and precise.”

The 2015 AIPPI World Congress, which has been taking place at the Windsor Barra Hotel and Congressos in Rio since October 10, closes today, October 14.

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