Protection of Sounds, Jingles and Mogos Although it has been possible to register sounds as trade marks for many years, very few have been protected. However, since the EU Trade Mark Directive 2015 came into force in the United Kingdom on 14 January 2019, MP3 and other sound files have been accepted by the UK Intellectual Property Office (UKIPO) and the European Union Intellectual Property Office, making it easier for sounds to be recorded and registered. While it is now easier to file applications for sound marks, it is still challenging to register sounds as trade marks. There are two issues to deal with: 1. Graphic representation of the sound Many of the sound marks which have been registered are pieces of music and these can be represented by transposing the sound on to a score. Examples of registered sounds can be seen below: • •
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3358089 (British Airways Flower Duet) 916960197 (Phillips)
• 914012281 (Samsung) However, more unusual sounds can be more difficult to represent graphically. The introduction of MP3 and sound files has made it easier to represent a sound, particularly very short jingles, pronunciation of spoken words, and so on. An example is the well-known “Simples” sound mark protected by Compare The Market Limited: •
908176133
2. Distinctive character of the sound A sound mark must meet the same requirements of other more traditional trade marks, in that it must “distinguish goods and services of one undertaking from those of other undertakings”. Therefore, a sound must not describe the goods or services for which registration is sought. For example, while distinctive for the production of movies, the famous Metro-Goldwyn-Mayer Lion Corporation’s (MGM) iconic lion roar would probably not be accepted for
safari holiday services. Similarly, the sound of the Merlin engine in the Spitfire plane would probably not succeed as a trade mark for airline services. If a sound lacks distinctive character as a new and unused mark, it can acquire distinctive character through use over a period of time, and it could be that the amount of advertising and promotion required for some sound marks to become distinctive may be a reason why brand owners have traditionally not protected them in great numbers.
Recent case study We recently filed a comparable rights application at the UKIPO based on a European Union application still pending after the end of the Brexit transition period on 31 December 2020. The application was for a jingle sound, and is reproduced below: •
3604547
