Can I register a sound as a trade mark?

What is the trade mark?  

It is important to ensure that those reviewing the Register know what the protected trade mark is. Sound files can be uploaded and it is also potentially possible to register a sound mark by way of musical notation.  It is also possible to use other forms of representation, such as a graphical representation of sound waves. 

 

Does the sound trade mark need to indicate origin?  

 The sound mark must serve to identify those goods and services as originating from a certain origin i.e. enable relevant consumers to identify the goods as coming from a particular place. Sound marks can be refused if they are devoid of any distinctive character, or wholly descriptive, or generic.  

 

What level of distinctiveness is needed?

The distinctiveness, as with any trade mark, does not need to be at the highest level and it does not need to be wholly inventive, or unusual.  It will depend upon the industry involved. Sound trade marks are commonly used in TV/broadcasting sector, so a sound trade mark application in that sector is more likely to be seen as acceptable. It will also depend upon how consumers will see the brand and whether they will see it as indicating origin, or as descriptive.  Jingles can be allowed. Sound trade marks can be allowed, even if the listener may not be able to accurately recall and reproduce the sign.  

 

Can functional sounds be registered?

Sometimes, but if a sound is more likely to be seen as providing information, or is a common sound in the context of the relevant goods, or is functional, then the trade mark application is likely to be refused.  A bike horn sound mark was allowed for advertising car sales as it was not seen as descriptive for those goods, but a can opening sound was refused as it was not seen to be distinctive for drinks. Electronically generated sounds for electronic devices may well be refused as they do not indicate origin, but are the typical sounds made by devices. 

 

What length of sound is required?

Although there are no precise criteria for what duration of sound would be allowed, it should not be too short, too long or a simple, banal sound.  Short sounds may be refused as being non-distinctive, not memorable and too common. Volkswagen’s application was refused on the basis that it was a single electronic sound.  An entire musical song, or symphony is also likely to be refused, as not likely to be seen as a trade mark. 

 

What well-known theme sounds have proven to be distinctive?  

The IPOs like memorable harmonies as they are more likely to be seen as indicating origin.  Repetition within a sound mark may help.  The James Bond theme,  although 25 seconds in length, was seen to have the criteria of a registrable sound mark.  

 

What other criteria would be reviewed?

Your sound mark should not be a very well-known or common sound such as a national anthem.  It should be different to tunes that are customarily used in ordinary life.  The IPO may look for particular sound sequences,  a certain resonance, upbeat sounds with bright elements and they seem to like fanfares.  Each case will however depend upon its own merits and facts.  

 

If a mark is finally refused for being non-distinctive, what are the other options?  

If you can show the sign has become distinctive through extensive and exclusive use for a significant period, which is likely to be several years, it may be possible to proceed based upon it having a secondary meaning as indicating origin.  This may be difficult to show across large geographical regions, such as the EU.  

 

Can I claim copyright if trade mark registration refused?

Yes in certain musical works if you can show ownership, copying and that it is a copyright work, where copyright has not expired. In the UK copyright is not registered. When adopting sound marks as trade marks ensure you do not infringe the copyright of others. 

 

Next steps for registering a sound mark

Sound marks are not common and seem to be an underused potential weapon for protecting your intellectual property.  Whilst not appropriate for every business, registration of such signs is useful, provided they are not functional, informational, banal, too short, too long and meet the fundamental principle of being seen to indicate origin.

 

Contact James Cornish for help in registering your sound marks.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in June 2024.