IPA trademark 6.-sound-auditory-trade-marks — IP Australia Trade Marks Manual of Practice and Procedure – 21.6. Sound (auditory) trade marks

A sound trade mark can be anything auditory. It can be a complex orchestral fanfare, or a simple mechanical clicking noise. It can be sung or spoken words, or a combination of voice and other sounds. It can be the sound of a dog barking, a bell ringing or a baby crying. Whatever it is, it must serve the purpose of identifying the trade source of the goods/services in respect of which it is to be used. 6.1 Representations and descriptions of sound trade marks An application for a sound as a trade mark must include a graphical representation of the mark. This may be a simple verbal description of the sounds such as "CLIP CLOP MOO" (see second example of acceptable descriptions below). Musical notation is acceptable as a graphical representation of a sound mark consisting of a musical piece. However, a lengthy piece of musical notation such as the complete score of an orchestral or piano piece is unlikely to meet registrability requirements. The name of a specific piece of music is not acceptable as a graphical representation unless additional information is supplied to identify the particular rendition claimed as a trade mark. Refer to the first example of acceptable endorsements below. In general, the musical notation of the specific piece would be more appropriate than just its name. As well as the graphical representation, the applicant must supply a clear and concise description of the trade mark which will be entered as an endorsement to the application. The applicant must supply recordings of the trade mark on a medium which allows for easy replaying. Currently, the most common media are CDs, DVDs and MP3 recordings. The description and the recorded representation of the trade mark should together clearly define all the details which constitute the trade mark. Examples of suitable endorsements to accompany the representations are as follows: The trade mark is a sound mark. It comprises the sound of dogs barking to the traditional tune "Greensleeves" as rendered in the audio tape accompanying the application. The trade mark consists of the sound of two steps taken by a cow on pavement, followed by the sound of a cow mooing (clip, clop, MOO) as rendered in the recording accompanying the application. The trade mark consists of the sound of a soprano voice singing wordlessly to the tune represented in the musical score attached to the application. The trade mark is demonstrated in the recording accompanying the application form. The trade mark consists of a repeated rapid tapping sound made by a wooden stick tapping on a metal garbage can lid which gradually becomes louder over approximately 10 seconds duration. The sound is demonstrated in the recordings accompanying the application. Part 10 Details of Formailty Requirements - 3.3 Representation of the trade mark - sound trade marks 6.2 Registrability of sounds as trade marks A sound mark is designed to identify the trade source of goods and/or services via auditory rather than visual means. Technology developed over the last century has increasingly exposed the buying public to advertising via sound, and thus to the possibility that goods or services could be identified by sounds, rather than by visual presentations. The 1995 Act allows for the registration of a sound as a trade mark. As with any other kind of trade mark, a sound must first meet the basic requirements for registrability set out in the Act. The first consideration for a sound claimed as a trade mark is to assess whether it is inherently adapted to distinguish the applicant's goods/services. The words of Lord Parker ( W & G Du Cros Appn (1913) 30 RPC 660 at 672) should be taken into account here. The extent to which the trade mark is adapted to distinguish the applicant's goods and/or services will: ... largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark closely resembling it. To determine whether a sound is one which other traders are likely to need or want to use, the examiner should consider whether it has functional aspects, or is commonplace in the trade and wider community. 6.2.1 "Functional" sounds A "functional" sound is one which, for example, is caused by the normal operation of a piece of equipment. The sound of a motorbike engine is an instance of a functional sound in respect of motorbikes or motorbike motors, and therefore one which other traders are likely to want to use for their own goods. Other examples of functional sounds which are unlikely to meet registrability requirements are the sounds of sirens such as those used by ambulances, fire engines and the police in respect of those particular services. The beeping noise made by a reversing truck, or the beeps associated with turn indicators on cars are similarly functional sounds in respect of some goods and services. 6.2.2 Sounds which are capable of distinguishing Sounds which are not functional or common to the trade when considered in respect of the goods/services claimed are adapted to distinguish the applicant's goods. The following table gives some examples of sounds which fall into this category. This list is provided as a guide, and examiners will need to consider each application on its own merits. Sound of wolf howling Beer, wine and spirits Sound of a child giggling or laughing Taxation consultancy services Sound of a chain saw Retailing of books, clothing, foodstuffs Hand bell ringing Restaurant services, take away, food bars Applicant's name sung in an advertising jingle Most goods and/or services Peal of church bells Clothing; cosmetics; hand tools and cutlery Short unrecognisable tunes Class 29 and 30 goods Human voice quacking like a duck Sightseeing tours; tour books, maps Portions of well know classic tunes eg Beethoven's 9th Symphony (Song of Joy) Most goods and services 6.2.3 Sounds which have insufficient adaptation to distinguish. Sounds fall into this category if they contain or consist of commonplace sounds, that is, they are sounds which other traders are likely to want to use for their similar goods. The amount of evidence required will depend on the nature of the trade mark. The more common the sound, the more evidence to support it will be required. A representative set of examples is included in the following table: Strauss Waltzes or Tango music Dancing tuition - some evidence required Combination of barnyard sounds Farming services; stock food and pet food Sound of a child giggling or laughing Child care services; paediatric medical services Sound of a ringing cash register with words "Best value, lowest prices" Retailing services - considerable evidence required Three blasts on a referee's whistle Sporting goods and bags Sound of vehicle motor starting up and running, with descriptive words Vehicle sales; automotive repair and maintenance; vehicles in class 12 6.2.4 Sounds which have no inherent adaptation to distinguish. Sounds which are functional or very commonplace are likely to be wanted and needed by other traders in the same field. They therefore have no inherent adaptation to distinguish. The applicant for one of these sound trade marks will need to show that, at the date of filing, the sound did distinguish their goods/services from the similar goods/services of other traders. Examples of these types of marks are shown in the table below. Sound of a chain saw Chain saw repair services; tree lopping services; retail of chain saws Sound of a duck quacking, fowls clucking, roosters crowing Live poultry, prepared/frozen poultry Sound of a cash register ringing Retailing services Single bell tolling or a solemn hymn Funeral services; undertaking services Sound of glass breaking Windscreen repair services; glass repair services Sound of vehicle motor starting up and running Vehicle sales; automotive repair and maintenance; vehicles in class 12 "ping "sound Microwaves; retailing of microwaves Portions of well known classical musical pieces Orchestral music performances Synthesised musical sounds Electronic musical synthesises; computer software for synthesising music on home computers