The Analysis on the registrability of the sound mark in the latest Chinese Trademark Law amendment

2013/6/20By Zhang Nan,[Trademark]

The Chinese Trademark Law is currently being amended for the third time. The legislative purpose of this amendment differs from the previous two amendments. The intent of the previous amendment was to revise the law after China joined the Singapore Treaty on the Law of Trademarks (Singapore Treaty) in 2008. The preparatory measures were initiated in 2006 and the final draft was submitted for public consultancy in November 2011. The draft has a total of 75 articles and more than thirty amendments. Among many interesting changes, the expansion of the subject matter has attracted considerable public attention. Perhaps the most intriguing to discuss is the new Article 8; permitting sound marks to be registered for the first time. This article mainly focuses on article 8 in the 2012 amendment to demonstrate the development of sound marks in China for the readers. In conjunction with this analysis, the legislative and practical development in several other countries will be briefly studied as well to predict the future development of sound marks in China and the potential public response to this amendment. Finally, the creative methods to protect one’s trademark using a sound mark application are further discussed.
 
I. Significant cases and legislation involving sound marks worldwide
First, we can briefly review the history regarding sound mark registrability in other countries. Sound marks have been qualified for trademark registration for almost a decade and relevant case law has developed quickly in the US, Australia and a number of European countries. In Asia, Japan has been discussing whether to expand trademark protection to include sound marks since 2009. So far, sound marks have not been registrable in Japan, though many Japanese companies have started to use deeply emotive sounds to attract customers as a method to distinguish products and services through different media.
 
Judicial decisions in two well known sound mark cases are worth studying. The first is Shield Mark BV v. Kist (Case C-283/01), a case which fell under the jurisdiction of the Court of Justice of the European Communities. In the case, the claimant company held several trademarks regarding software, newspapers and magazines in legal and other services. One set of sound marks contained Beethoven’s musical piece entitled Für Elise. The marks were filed as three groups: The first group contained a musical stave including the first nine notes of Für Elise; the second group were termed as, “consists of the first nine notes of Für Elise; the third group was termed as music notes E, D#, E, D#, E, B, D, C, A. Some of these marks were filed as sound marks and some others were filed as word marks. The other set of marks contained three sound marks, two of which were described as an onomatopoeia denoting a cockcrow. The claimant used the Für Elise melody as a tinkle (referred to as a jingle in the US) in advertisements on the radio, software and news. The defendant used a similar audio combination in his legal consultancy advertisement. The defendant Mr. Kis, who provided legal consultancy services and launched an advertising campaign using the same sound marks and marketing technologies as the claimant in 1995. The judge analyzed the facts above and reached five conclusions as follows:
(1) Article 2 of EU Trademark Directive 89/104 allows sound marks to be trademarked.
(2) A sound mark shall not only be distinctive as a trademark, but it also must be capable of being represented graphically in a clear, precise, self-contained, easily accessible, intelligible, durable and objective way.
(3) The law states a competent national court shall determine whether the requirements are satisfied in each case based on the relevant facts.
(4) The requirements are satisfied based on the representation taking the form of a musical stave.
(5) Descriptions using written onomatopoeia and the word arrangement of musical notes are normally insufficient.
In a second case, the famous sound mark application of a roar of a lion by Metro-Goldwyn-Mayer Lion Corp. (Case R-781/1999-4), the applicant wanted to register “a mark constituted by the sound produced by the roar of a lion and is represented by the spectrogram”. This application included the following graphic representation (this spectrogram was cited from the application document):
The trademark examiner refused the application on following grounds. Firstly, the examiner held that the reproduction of the mark and its description had no correlation in that the public could not recognize the sound from viewing the representation above, thus, the application did not contain a legally acceptable graphic representation of a mark. Secondly, the examiner held that the mark lacked distinctiveness. The applicant attempted to argue that the graphic representation requirement was satisfied since the spectrogram was capable of representing the sign graphically and the public could recognize the mark without hearing the sound. Furthermore, the applicant also argued that through the use of this mark, it obtained the distinctiveness.
The applicant appealed the examiner’s decision, but the Board of Appeals dismissed the appeal on the following grounds:
“Graphic representation of a noise by means of a sonogram results from analysis of the pitch (frequency), relative volume (frequency content) and progression over time of the sound occurrences. Accordingly, representation by means of a sonogram is comparable with representation using musical notation…One needs a certain amount of training and practice before one can read sonograms in such a way as to be able to conceive the noise or sound depicted. However, the same applies to musical notation and nobody seriously disputes the fact that musical notation is a suitable way of representing sound marks graphically. On the other hand, a sonogram without any timescale (horizontal) or frequency scale (vertical) cannot be read. This situation would be comparable with one in which musical notation has no lines, key, or designation of the notes as, for example, crotchets or semibreves… Accordingly, although the ‘roaring lion’ trademark does not involve music in the traditional sense of the word, it is registrable in principle as a Community trademark, since a form of graphic representation that fulfills all requirements is available in the shape of the sonogram. The appeal against the examiner’s decision to reject must however fail because the sonogram submitted with the application is incomplete: it contains no representation of scale on the time axis and the frequency axis.”
From the decision of Shield Mark BV v. Kist, it can be seen that it emphasized the sound mark must be represented graphically in a clear, precise, self-contained, easily accessible, intelligible, durable and objective way. From the decision on “The Roar of a Lion” application, it further clarifies that a sonogram without any timescale (horizontal) or frequency scale (vertical) does not fulfills those requirements. When applicants apply for sound marks, these points must be carefully considered.
 
II. Changes to the subject matter in the new Article 8 in the latest Chinese Trademark Law amendment
Article 8 of the current law states that any visible sign that can serve to distinguish the goods or service of a natural person, legal person, or other organization from those of another, including any work, design, letter of the alphabet, numeral, three-dimensional symbol and color combination, or any combination of the above, may be registered as a trademark. In the Chinese Trademark Law Amendment Draft submitted to the Legal Affairs Office of the State Council, the registrability of several non-conventional marks, such as single-colors (which obtain distinctiveness after use), sounds, scents, and motion signs, were added into Article 8. However, only single-colors (which obtain distinctiveness after use), sounds and any combination of sounds and other elements were left as eligible for registration. The reviewed draft deleted the registrability of other marks, such as scents and motion signs. These deletions may be due to the fact that these marks are highly subjective. The registrability of these marks would rely heavily on the discretion of the trademark examiners’ mind.
 
III. The legislative and practical significance
The registrability of sound marks in the new Article 8 demonstrates a significant legislative leap to broaden the scope of subject matter in China. As of 2012, China had approximately 7.17 million registered trademarks and this quantity ranks among the top in the world. But the current trademark law still cannot satisfy the demand of economic development in China. Furthermore, the amendment was ini t i ated based on three principles: firstly, the amendment is aiming to serve the realistic domestic demand as well as to comply with international treaties; secondly, the amendment has its own focus and concentration to serve the trademark right holders; thirdly, the change is done in the form of a protocol amendment to keep the completion of the trademark law. The legislative development of registrability of sound marks represents China’s legislative purpose to serve the needs of trademark applicants and to catch up with the trend in international trademark laws and regulations.
IV. Future: how to make a sound mark “Safe and Sound”?
At first, it can be predicted that the general public may feel it is difficult to distinguish the distinctiveness of a sound mark. This is a challenging skill to master even for a professional trademark examiner. China is a civil law country, thus the details on the standards of examining sound marks may be listed in the new Implementing Regulations of the Trademark Law or stated a specific “Judicial Explanation” in the future.
Moreover, since the cost of a trademark application in China is inexpensive, there is no harm in applying for a sound mark to protect one’s interest as a trademark strategy. The reaction of applicants to the registration of sound marks varies in different jurisdictions. For instance, sound as registrable trademarks was included in the Australian Trademarks Law 1995. 16 sound marks were registered between January 1st, 1996 and January 11th, 2004. Jani McCutcheon commented on this phenomenon in an academic article entitled, The Registration of Sounds and Scents as Trade Marks under Australian Law as follows: “Traders are uninterested in the use of such signs as trademarks perhaps due to cost factors, or simply because traders have not yet embraced the potential registrability of such signs, given their historical exclusion from the Register.” When a sound mark is permitted, it provides a new way to protect one’s brands. Meanwhile, since many people do not realize the importance of its registrability, this may be an ideal moment to build up one’s new exclusive rights in a market.
Since sound is a form of sense which can be difficult to distinguish, it is suggested that the trademark applicants make their sound marks as distinctive as possible before introducing them in dispute cases. In Shield Mark BV v. Kist , the Court of Justice of the European Communities expressed the relatively strict threshold of the registrability of sound marks in as follows: “In the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of  musical notes, without more. On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidental.” In China, the interpretation of distinctiveness may rely on the crucial understanding of a sound mark from the trademark administration authorities first, then this understanding may become an important factor that a judicial court will take into consideration when deciding a sound mark case.
Finally, it is suggested that the applicants keep an open and creative mind on sound mark application strategies (as an important part of the overall branding strategy). Trying different forms of sounds can be profitable and creative. For instance, it’s been rare for the characters of advertisement slogans to be registered as trademarks in China. When the sound mark becomes registrable, will it be possible to register a particular voice speaking a certain advertisement slogan in China? Besides, applicants may try both musical marks and non musical marks. Also, applicants may try the combination of colours and sound marks to make very strong audio-visual effect in order to obtain greater distinctiveness in the mind of the consumer. Thus, multiple social media, such as TV, radio broadcasting and Internet, will be more deeply involved in the overall branding strategy.
To sum up, opening the door for the registration of sound marks is a positive sign for creative trademark applicants to better protect their brands, products or services. We shall maintain curiosity on the developments in this field.

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