Trademark registration in China follows the graphic representation regime, and therefore sound trademarks should primarily adopts graphic representaion, specifically in the form of stave or numbered musical notations of the sound in combination with notes in words for trademark registration. For a sound trademark that could not be explained in stave or numbered musical notations, descriptive representation could be made in words. On the whole, the sound trademark registration in China is generally by graphic representation, with descriptive representation as an exception.
Sound trademark is a new type of trademark, considerably different from the conventional trademarks. How should an applicant file the application for registration? How should the trademark examining authorities conduct the examination? This article made a brief introduction to the formal request for sound trademark registration in the US and EU, along with an analysis of the formal request for sound trademark registration in China providing a summary and comment to give useful reference.
On August 30, 2013, the 4th Session of the Standing Committee of the 12th National People's Congress passed the Decision of the Standing Committee of the National People's Congress on Amending the Trademark Law of People's Republic of China, providing that sound could be the subject matter for trademark registration. It has been more than five years since the amended Trademark Law came into effect on May 1, 2014. But only a few sound trademarks were successfully registered.
In October 2018, Beijing High People's Court decided in its final decree that Tecent's QQ notification sound under application as a trademark was distinctive and supported registration of the sound Di-Di-Di-Di-Di-Di as a trademark. This was the first sound trademark case that was judicially adjudicated in the field of trademark law in China.
Sound trademark is a new type of trademark, considerably different from the conventional trademarks. How should an applicant file the application for registration? How should the trademark examining authorities conduct the examination? This article made a brief introduction to the formal request for sound trademark registration in the US and EU, along with an analysis of the formal request for sound trademark registration in China providing a summary and comment to give useful reference.
Formal requirement for trademark registration under the US Lanham Act
Under Lanham Act, any word, name, symbol, three dimensional device, or combination thereof to identify and distinguish the goods or services may be registrable.
The US is the first country to recognize sound trademark, and arguably most lenient on registration in the world. MGM used "Lion's roar" as its sound trademark as early as 1924, and secured a trademark registration. As to registration examination of sound trademarks, the US Trademark Manual of Examining Procedure (TMEP) specifically defines sound trademark that identifies and distinguishes a product or service through audio rather than visual means. Therefore, the US Patent and Trademark Office (USPTO) takes the description of a sound trademark proposed for registration as the condition for registration. The applicant when applying for registration does not have to submit a drawing, but has to provide a description of the trademark and evidence of such use. This is what is referred to as descriptive representation in the trademark registration regime. Therefore under such regime, the written description from the applicant for the proposed sound trademark is of primary significance for the ultimate registration. The current registered US sound trademarks are described by simulated sound, musical notes or a short summary of descriptive phrases. But in sound trademark registration practice, there is no such thing as preference of a favored method of description of sound trademarks over another.
Due to the inherent nature of sound trademarks, the USPTO requests that applicant when filing for registration provide evidence to show distinctiveness or to show secondary meaning of the sound trademark. Yet, the distinctiveness of a sound trademark is different with conventional trademarks. The Trademark Trial and Appeal Board (TTAB) divides the sounds of proposed sound trademarks into sounds that are "arbitrary, unique or distinctive" and "ordinary," the former being generally viewed as having inherent distinctiveness for which the applicant does not have to prove secondary meaning, whilst the latter, as having no inherent distinctiveness, the applicant needs to prove that the sound trademark has a secondary meaning.
The TTAB, having clarified the basic requirements for sound trademarks, merely explains how a sound trademark may work to indicate source of products or services, without specifying what sounds are more appropriate as sound trademarks, nor did it give specific reasons for refusing registration for sound trademarks. It can only be learned by the limited cases so far as which of the sounds may be registrable as sound trademarks, and which are not.
Formal requirement for sound trademarks in EU
First Council Directive 89/104/EEC (First Directive) and Council Regulation (EC) on the Community Trade Mark provided similar definition of trademarks, viz., any signs, especially words, including names, designs, letters, numbers, product shapes, product packaging shapes that can be presented in graphic form, that are capable of distinguishing the goods or services of one business from those of another. That is to say, a trademark proprietor obtains a trademark right within the European Union by registering a graphic representation of a sign. This is the so-called graphic representation requirement in trademark registration.
Shield Mark BV v. Joost Kist is a typical case in EU relating to sound trademarks. In this case, the plaintiff applied for sound trademark registration of the first nine notes in Beethoven's famous piano work Für Elise, along with a written description that "the trademark consists of the first nine notes of Für Elise". The European Community court concluded that although the First Directive, issued by the European Community, did not specify that sound trademark may be registrable, neither did it specifically preclude sound trademark, and therefore as long as a sound trademark meets the registration requirement, it could become a registrable trademark subject matter. The European Community court further pointed out that although sound itself cannot be perceived by visual sense, as long as the written description is clear, precise, complete, and independent, accessible, understandable, and objective, it may be a registrable trademark subject matter.
According to the European Community's trademark requirement, a sound trademark's drawing must be presented in musical scores or acoustic spectrum. When an applicant presents a sound trademark in musical scores, the scores must be divided into sections, with specific clefs, notes and rests; when presenting sound in acoustic spectrum, the applicant must indicate the time and frequency coordinates. The Court of Justice of the European Union (CJEU) and the Office for Harmonization in the Internet Market (now EUIPO) adopted a relatively stringent standard on sound trademark.
To cope with the needs of development, EU issued a batch of proposals in December 2015 for trademark law reform by amending the Community Trade Mark Regulations as EU 2015/2424 Regulations, and replacing First Directive with EU 2015/2436 Directive. Considering the practical needs in CJEU's decisions and commercial development, EU 2014/2424 Regulations deleted the mandatory requirement for graphic representation, and specifically listed sound as an element for trademark registrability. Therefore, within EU, sound as registrable trademark subject matter has been widely accepted in practice, and has been well founded in law.
Sound trademark formal requirement in China
The Trademark Law of People's Republic of China, as amended 2013 provides in Article 8, that any signs, including words, graphs, letters, numbers, three-dimensional symbols, color combinations, sound or any combination thereof, that are capable of distinguishing the goods of a natural person, legal person or other organization from those of others may be applied for registration as trademarks. This revision of the Trademark Law deleted the visibility requirement for a trademark and included sound into registrable trademark subject matter. The subsequently amended the Regulation on the Implementation of the Trademark Law of the People's Republic of China (the Regulation) provides, in Article 13, that the applicant shall submit to the Trademark Office one copy of the Application Form for Trademark Registration and one copy of the trademark design, and the trademark designs shall be clear, easy to paste, printed on clean and durable paper or recorded in photographs, and in a size of not less than five centimeters but not more than ten centimeters in length and width. By this, we can see that a trademark proprietor obtains a trademark right in China by registering a graphic representation of a sign as well. In other words, China also adopted the graphic representation requirement in trademark registration.
As to sound trademarks, the Regulation further provides in Article 13, "Where an application is filed for registration of sound as a trademark, a statement
shall be made in the application, a qualified sound sample and a description of the sound for registration as the trademark shall be submitted, and the method of use of the trademark shall be indicated. The description of the sound trademark shall use stave or numbered musical notations of the sound in combination with notes in words; where the sound is unable to be described by stave or numbered musical notations, it shall be described in words; the description of the trademark shall be in conformity with the sound sample." Hence, the formal requirement for sound trademark registration in China is generally by graphic representation, with descriptive representation as an exception.
The former State Administration for Industry & Commerce (SAIC) issued the Standards of Trademark Examination and Trial (the Standards) in December， 2016，for detailed arrangement of sound trademark formal examination, which is also the specific requirement for sound trademark registration in China. It categorizes sound trademarks by their characters into musical sound trademarks, nonmusical sound trademarks, and sound trademarks with both musical and nonmusical characters, having different provisions for each: For musical sound trademarks, description shall be made by stave or numbered musical notations of the sound in combination with notes in words. The stave or numbered musical notations, along with word explanation shall be the graphic representation for the sound trademark. The stave or numbered musical notations shall be clear, precise and complete. It may include clefs, keys, tempo (beat), bars, notes, rests and incidentals (sharps, flats, naturals), etc.
Nonmusical sound trademark shall be accompanied with word explanations, which shall be the graphic description of the sound trademark. Word explanations must be clear, precise, complete and easy to understand.
A sound trademark with both musical and nonmusical characters, shall use stave or numbered musical notations of the sound in combination with notes in words on the musical portion of the trademark, and with a word explanation on the nonmusical portion. The stave or numbered musical notations and the word explanation shall be the graphic representation for the sound trademark.
In the aforementioned sound trademark case decided by Beijing People's High Court involving Tencent QQ's notification sound, the sound trademark consists of six brisk Di-Di-Di-Di-Di-Di with identical frequency. A CD of the sample was attached, along with the sound spectrum, frequency spectrum, and oscillograph for examination.4 This sound trademark is defined by descriptive representation.
The Trademark Review & Adjudication Board had made a finding that the disputed trademark consists of the sound of Di-Di-Di-Di-Di-Di was relatively simplistic and without creativeness, and when used in connection with services of television broadcast and information transmission, it lacked distinctiveness that a trademark should possess, and would thereby be insufficient to distinguish the source of services. For this reason, registration should be denied of the trademark in dispute.5 From this we may conclude that the trademark in dispute satisfied the formal requirement for trademark registration, and the only reason for the Board's refusal for registration was that it lacked distinctiveness necessary for trademark registration.
Conclusion
The US trademark registration is based on descriptive representation, which may be more appropriate for traditional trademarks of words, designs and shapes, but may not be sufficiently clear, precise or objective for sound trademarks, and is difficult to delineate the specific scope of trademark rights. For instance, a simple series of musical notes do not indicate the pitch nor the duration. Therefore it is inappropriate to use musical notes to define sound trademarks. The representation by sound simulation, due to lack of consistency between the simulation and the actual sound, it will be difficult to determine whether a sound is actual or simulative. In addition, human perception of sound simulation will differ due to different language describing the sound.
The EU trademark registration adopts the graphic representation regime, which is advantageous in two respects. First, graphic representation can clearly and precisely define a trademark, and the examining department of trademark authorities may make a direct comparison so as to make appropriate determination, which leads to accurate trademark registration. Second, to competitors and public in general, graphic representation is conspicuous and easy to understand, and more clearly define the scope of each trademark's right. For a sound trademark characterized in stave musical notations or sound spectrum, which are more clear, precise and objective, even though people would not instantly understand its specific contents, they would more easily understand once given certain training or practice.
Trademark registration in China follows the graphic representation regime, and therefore sound trademarks should primarily adopts graphic representation, specifically in the form of stave or numbered musical notations of the sound in combination with notes in words for trademark registration. For a sound trademark that could not be explained in stave or numbered musical notations, descriptive representation could be made in words. On the whole, the sound trademark registration in China is generally by graphic representation, with descriptive representation as an exception. (Translated by Zheng Xiaojun)
About the Author: Song Jianbao
Director of Center for Internet Judicial Research, China Institute of Applied Jurisprudence
Source: China IP Magazine, Issue 94
