A trademark is a "sign' which is used to distinguish the goods or services provided in the course of trade by one person from the goods or services provided by another. A trademark is a symbol, a word, letter, slogan, design, the shape or appearance of packaging, or any other symbol that identifies and distinguishes a product or service.
Trademarks are often used with the abbreviations ‘®’ or ‘™’. An ‘®’ denotes a trademark that has been federally registered, and ‘™’ for those which are not federally registered (in the United States).
While it is possible to use a trade mark without registering it, there are many advantages to registering trade marks. These include;
(a) Confidence that the trademark does not infringe another trade mark;
(b) Other traders know that the registered owner claims ownership of the trademark;
(c) It is easier to prevent other traders from using a registered trade mark.
Most conventions and national statutory provisions provide a definition of a trademark that either encompasses sound as a trademark, or does not expressly exclude sound as a trademark.
TREATIES, CONVENTIONS AND AGREEMENTS
1) International Trade Marks
The Madrid system is a multi-national system based on two international treaties - the Madrid Agreement and the Madrid Protocol, both of which are administered by the World Intellectual Property Organisation (WIPO). This system allows for registration in a number of countries using one single application in English with one application fee.
(a) The Madrid Agreement Concerning International Registration of Marks
The Madrid Agreement was concluded in 1891. The following countries are currently members of the Madrid Agreement: Albania, Algeria, Armenia, Austria, Azerbaijan, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Bulgaria, China, Croatia, Cuba, Czech Republic, Democratic People's Republic of Korea, Egypt, France, Germany, Hungary, Italy, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Luxembourg, Monaco, Mongolia, Morocco, Mozambique, Netherlands, Poland, Portugal, Republic of Moldova, Romania, Russian Federation, San Marino, Serbia and Montenegro, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Swaziland, Switzerland, Tajikistan, Yugoslavia (former Republic of Macedonia), Ukraine, Uzbekistan, Vietnam.
(b) Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
The Madrid Protocol of 1989 was adopted in order to introduce new features to the Madrid Agreement. These new features remove the difficulties which prevented certain countries adhering to the Madrid Agreement. The Protocol has been in force since 1996.
The following countries are currently members of the Madrid Protocol: Austria, Benelux (Belgium, Netherlands, Luxembourg), People's Republic of China, Cuba, Czech Republic, Democratic People's Republic of Korea, Denmark, Estonia, Finland, France, Georgia, Germany, Hungary, Iceland, Kenya, Lesotho, Liechtenstein, Lithuania, Monaco, Mozambique, Norway, Poland, Iceland, Kenya, Lesotho, Liechtenstein, Lithuania, Monaco, Mozambique, Norway, Poland, Portugal, Republic of Moldova, Romania, Russian Federation, Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Turkey, United Kingdom, and Yugoslavia.
The main innovations introduced in the Madrid Protocol include the following;
- The applicant may base his application for international registration on a pending national application, rather than having to wait for a national registration.
- Each national trademark office has eighteen months (or longer, in the case of oppositions) to notify the World Intellectual Property Organization (WIPO) of objections to the international registration (rather than twelve months).
- Each national trademark office may receive higher fees than under the Madrid Agreement, thus applicants should expect to pay more for trademarks filed under the Protocol, but still considerably less than filing independent national applications.
- In the case of a rejection or cancellation of a national application, an international registration under the Protocol may be transformed into national applications, benefiting from the original filing date or priority date, within three months from the date of cancellation.
- Applications under the Protocol may be in either French or English, whereas the Madrid Agreement permits only French.
- It is also envisaged that the Office for Harmonization in the Internal Market (OHIM) will become a party to the Protocol, thus enabling international registrations to be based on Community Trade Mark applications, or to receive European Community protection through an international registration.
- International applications are filed at the International Bureau of WIPO in Switzerland and applications may be made by nationals of Contracting States, or those who have a real and effective industrial or commercial establishment in a Contracting State, or residents of a Contracting State. While international registration often occurs fast, national registration under the Protocol may take over eighteen months. Upon registration international trademarks are valid for ten years.
2) Community Trademarks
A community trade mark is a single trade mark registration valid in fifteen Countries of the European Union (EU) including; Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, United Kingdom. Applications are made to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) which is based in Spain.
Community trade marks may be applied for by nationals of EU member states, nationals of states party to the Paris Convention for the Protection of industrial Property, residents of states party to the Paris Convention, commercial establishments in states party to the Paris Convention, and nationals of states not party to the Paris Convention, but which accord the same level of trade mark protection as countries which are parties.
(a) The Paris Convention for the Protection of Industrial Property (revised 1967)
The Paris Convention for the Protection of Industrial Property was concluded in 1883 and is one of the pillars of the international intellectual property system. It applies to industrial property in the widest sense, including inventions, marks, industrial designs, utility models (a kind of "small patent" provided for by the laws of some countries), trade names (designations under which an industrial or commercial activity is carried on), geographical indications (indications of source and appellations of origin) and the repression of unfair competition. The total number of contracting states on December 31, 2002, was 164.
Article 6(1) provides that the conditions for filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation. The Paris Convention does not adopt one particular definition of trademark, rather Article 1(3) provides industrial property "shall be understood in the broadest sense"
(b) EU Harmonisation Directive 1988
Article 2 defines a trademark as "any sign 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".
(c) EU Council Regulation 1993
Article 4 adopts the same wording as Article 2 of the EU Harmonisation Directive in relation to signs of which a Community mark may consist.
(3) International Classification
(a) The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
The Nice Agreement was concluded in 1957. The Nice Agreement establishes a classification of goods and services for the purposes of registering trademarks and service marks. The Classification consists of a list of classes (based on types of products and services) of which there are thirty four for goods and 11 for services and an alphabetical list of the goods and services. The total number of contracting states on December 31, 2002, was seventy.
NATIONAL STATUTORY PROVISIONS
The US has long recognised sound marks. A sound mark falls within the definition of a trademark under 15 U.S.C "1127. A trademark is defined as "any word, name, symbol, or device, or any combination thereof used by a personÉ to identify and distinguish his or her goods". The terms "symbol' and "device' are interpreted broadly to include sound marks. Additionally, sound marks are not specifically excluded from registration under 15 U.S.C "1052.
The Canadian Trade Marks Act, R.S.C. 1985 neither specifically includes nor excludes sounds as trademarks. The judicial position is that a trademark must be capable of visual representation. "Trademark' is defined as a mark is use by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased or hired or performed by others. "Mark" is not defined in the legislation but has been interpreted by the Federal Court of Canada to mean "something which can be seen".
The U.K. Trade Marks Act 1994 does not specifically exclude sound trademarks nor specifically include them. S1(1) of the Trade Marks Act defines a "trademark' as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another undertaking". s103(2) provides the use of a mark may be "otherwise than by means of a graphic representation".
Article 3 "1 of the United Germany Trademark Law 1995 explicitly refers to sound trademarks providing that all "marks or signs, especially words including personal names, pictures or figures, letters, numbers, audible marks, three dimensional formations including the form of an article or its packaging as well as other presentations including colours or colour compositions may be protected, which are suited to distinguish goods or services of an enterprise from those of other enterprises".
Under Article 11 of the German Trade Mark Rules sound trademarks are registrable if the application is accompanied by a two-dimensional graphical reproduction of the trademark, such as a sonogram. Further a sound reproduction of the trademark eg. tape or similar must also be filed.
Trademarks and service marks that are capable of graphic representation and serve to distinguish the goods or services of any natural or legal person are registrable under French Trademark Law No. 91-7 (1991). Audible signs, including sounds and musical phrases, arrangements and combinations are specially referred to in the law.
The Italian Trade Mark Law, Legislative Decree 480 of 1992, Article 16 provides that "any new sign which can be represented graphically, particularly words, including personal names, designs, letters, numerals, sounds, the shape of the goods or of their packaging, colour combinations or tonalities, provided they are capable of distinguishing the goods or services of one enterprise from those of other enterprisesÉ may be registered as a trademark".
The Australian Trade Marks Act 1995 includes a broad definition of a "mark' which includes sounds. Any "sign" can be registered as a trade mark. A sign is defined in the Act to include: a letter, name, signature, word, numeric device, brand, heading, label, aspect of packaging, shape, colour, sound, or scent.
The Trade Marks Amendment Act 1994 (entered into force January 1 1995) provides a broad definition of trademark to include any sign capable of being represented graphically and capable of distinguishing goods or services of one person from those of another person. This definition includes shapes, smells, sounds, and colours, provided they are capable of being graphically represented.
The Swedish Trade Marks Act provides all signs that can be graphically reproduced are registrable as trademarks. Sounds are registrable provided they are distinctive and can be graphically reproduced.
Article 1 of Law No. XI of 1997 on the Protection of Trademarks and Geographical Indications provides that: Trademark protection shall be granted for any sign capable of being represented graphically provided that these are capable of distinguishing goods or services from those of other undertakings. Signs which may be granted trademark protection include: words, combination of words, including personal names and slogans, letters, numerals, figures, pictures, two- or three-dimensional forms, including the shape of goods or of their packaging, colours, combination of colours, light signals, holograms, sound signals, and combination of signs.
In Yugoslavia every new sign, which can be represented graphically and is capable to distinguish goods or services applied for from those of other companies may be registered as a trademark, including personal names, designs, letters, numeral, sounds, three-dimensional trademarks, colour combinations or chromatic tonalities.
Cuba The new trademark law in Cuba broadly defines a "trademark' to include any distinguishable sign, including words, devices, letters, numerals, three dimensional objects, combination of colours, sounds.
Netherlands, Belgium and Luxembourg
The Benelux Trademarks Act of 1962 regulates the protection of trademarks. A trademark is defined as "any symbol which can be represented graphically, used to distinguish a company's products and services". This may be a word, a picture, a shape, or a combination of any of these.
Sound marks cannot be registered in Brazil. The limitation of trademark registration to "visually perceptible' signs excludes sound mark protection. There is also no protection for unregistered sound marks available.
The Mexican Industrial Property Law does not allow registration of sound marks since marks must be visually perceptible. Sound mark protection under the doctrine of unfair competition has not been considered
The registration of sound marks is not provided for in South Korea, however it may be possible to protect sound marks under the Unfair Competition Prevention Act.
Malaysia The Intellectual Property Corporation of Malaysia Act 2002 amends the Trade Marks Act 1976.
The Code of Intellectual Property Act 1979 Part V defines "trademark' as "any visible sign serving to distinguish the goods of one enterprise from those of other enterprises".
Pakistan The new Trade Marks Ordinance 2001 (if and when enacted) will extend the definition of a mark to include colours and sounds.
China, Taiwan & Japan Sound marks are neither registrable, nor otherwise enforceable under related laws in China, Taiwan and Japan. However, Taiwan's new draft Trademark Law may soon accept sound mark applications for registration. The amendments to China's Trademark Law came into effect on December 1 2001, allowing for registration of certain signs including words, figures, letters, numbers, three-dimensional signs, colour compositions and combinations thereof capable of distinguishing goods and services.
In Singapore sound and smell marks are excluded from the definition of a trade mark. A trade mark is defined as any visually perceptible sign capable of being represented graphically, and which is capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods and services so dealt with or provided in the course of trade by any other person. Such a sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof.
Article 63 of section 1 of Book II on Trade Marks, Trade Description, Geographical Indications, Designs & Industrial Models states "A trademark is any sign capable of distinguishing a product or service and includes in particulars, names in a distinctive form, signatures, words, letters, figures, drawings, symbols, titles, stamps, seals, vignettes, embossed engravings, and any special combination of colours in a distinctive form or any combination thereof, used or intended to be used, either for distinguishing the products of any industrial, agricultural, forest or mining venture or any other goods, or for indicating the origin, quality, category, guarantee, method of preparation or performance of any service".
APLF Association of Patent Law Firms, A Brief Summary of the WIPO Texts http://www.aplf.org/mailer/issue46.html (31/03/03).
International Trademark Association, INTA Basics - Madrid Protocol http://www.inta.org/basics/ip/mprotocol.shtml, 2003, 18/03/03.
Madrid Agreement Concerning the International Registration of Marks of 1891, as revised 1900, 1911, 1925, 1934, 1957, 1967, and amended 1979.
Qualitex Co. V Jacobson Products Co., 115 S. Ct. 1300 (1995).
Articles and Publications
International Trademark Association, A Report on the Protection of Sound Trademarks, February 1997, New York, p 3 -11.
The Patent Office, South Wales, Applying for a Community Trade Mark, second edition, May 2002, p 3.
The Patent Office, South Wales, Applying for an International Trade Mark, second edition, October 2001, p 3.