After almost 20 years, the famous lion’s roar that appears at the start of an MGM Studios movie is registered as a sound trade mark in Canada. MGM Studios initially applied to register the trade mark in 1992, but difficulties associated with visually representing the sound proved to be problematic. Fortunately, in Australia, no such difficulties exist, as sounds are capable of being trade marked.
Remember the “Happy Little Vegemites” jingle? (Click to hear). We grew up with this popular tune, which has cemented the Vegemite brand in our psyche. The jingle was written in 1954, but only registered as a sound trade mark in 2003 following extensive legislative changes to trade mark law in Australia.
Unbeknown to many, there are a number of non-traditional trade marks which take on a number of creative forms, including both sound and animation. The Trade Marks Act 1995 (Cth) (Act) defines a trade mark as, “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”1 Put another way, the sole function of a trade mark is to act as a “badge of origin”.
The Act contains an expansive definition of “sign” and includes a numeral, name, letter, word, signature, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. Additionally, any combination of any of these items can be used, meaning that such things as animations or arrangements of sounds would constitute a trade mark within the meaning of the Act. Savvy use of non-traditional trade marks is a powerful marketing tool and can act as a shield and a sword, protecting brand identity both domestically and overseas.
In Australia, there are currently 43 sound trade marks and 19 movement trade marks on the trade marks register. The sound trade marks range from the simple monotone sound to melodic tones comprising musical notes. For instance, the trade mark for Boost Juice, a juice bar chain spoken word “Boost”, pronounced with the “OO” part of the word substantially elongated. (Click to hear).
On the other hand, Toyota’s sound trade mark simply consists of five musical notes, namely C, D, E, G and A, but the registered trade mark contains 13 different variations of these notes. (Click to hear). The “oh what a feeling” tune is often accompanied by the Toyota ”jump”, which has also been registered as a movement trade mark, comprising a number of moving silhouettes. (Click to see).
Is it easy to register a sound or movement trade mark?
Like traditional trade marks, a proposed sound or movement mark needs to satisfy the fundamental condition for the registrability of a trade mark, that is, that the proposed trade mark is to be capable of distinguishing the goods or services of a person in the course of trade from the goods or services from another.2
There also needs to be a graphical representation of the mark.3 For sound or movement trade marks this would require a clear and concise textual description accompanied by a recording of the trade mark in the appropriate format.4 This is generally an MP3 file for a sound trade mark, and a computer video file for a movement trade mark.
Why bother?
In general, there is no requirement to register a trade mark as other protections exist. For example, passing off provides that no person is entitled to represent that his or her goods or services are those of another, which is aimed at preventing commercial dishonesty and protecting a business’s assets, goodwill and reputation. Whilst passing off offers protection, as one Federal Court judge observed, it “contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form”,5 therefore making it complicated (and potentially expensive) for a business to rely upon.
Registering a trade mark eliminates these so-called “nooks and crannies”. The primary benefit of registering a trade mark is that it gives the trade mark owner powerful proprietary rights over the registered mark,7 which protect the owner from unauthorised use of the trade mark in simplified manner. Registration ultimately protects the company’s brand and provides the trade mark owner with the means by which to seek remedies in the event there is infringement of the trade mark by others.
Ultimately, a business must strive to stand out from its competitors. To achieve this, a savvy use of branding is required which can both protect and promote one’s business. As it has been illustrated with Vegemite and Toyota, remembering a tune or recognising a movement can act as a “badge of origin”, which is an effective tool in brand promotion.
Branding and goodwill are integral components of any business. Therefore, the protection of these components should be of paramount importance to any proprietor. The registration of a trade mark provides valuable and cost effective protection of both the individual mark and an enterprise’s brand as a whole.
Lavan Legal’s Intellectual Property and Technology Team is able to facilitate the registration of trade marks, whether that be the traditional word or graphical form or the more recent and innovative sound and movement marks.
