Edgar Rice Burroughs Inc v OHIM

Edgar Rice Burroughs Inc v OHIM

(R708/2006-4)

Board of Appeal

Date of decision: 27th September, 2007

In 2004, the Applicant applied for registration “The Tarzan Yell”[1] through a sonogram. The sonogram/proposed sound mark is depicted herein below:

The examiner did not consider the sonogram as an acceptable ‘graphical representation’ of a sound mark and relying on Shield Mark BV, stated that such a representation had to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Applicant filed an appeal before Board of Appeal, OHIM. OHIM’s Board of Appeal dismissed the Appeal by holding as follows:

• A trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
• In case of sound marks those requirements are satisfied with musical notations.
• In the ‘Shield mark’ case, the Court did not expressly consider sonograms or sound files but the representation must in any case be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
• The requirements concerning a graphic representation of the mark serve a dual purpose: (a) to define the precise subject-matter of protection; (b) that entry of the mark in the Register makes it accessible to authorities and the public, who must be able to ascertain what is protected.
• Verbal circumscription of the mark as a ‘yell of the fictional character Tarzan’[2] is not a ‘clear’ and ‘self-contained’ representation.
• Spectrogram, as filed does not fulfil the criterion to be ‘self-contained’.
• ‘Self-Contained’ means that third parties viewing the mark should on their own and without additional technical means be able to reproduce the sound or at least to have a general idea of the same. Nobody can read a spectrogram as such.
• It is impossible to deduce from the image at what exact frequencies this occurs. It is also impossible to recognize from the image whether the sound phenomena depicted therein is a human voice or something else, e.g. the tune of violins. The pressure curve reproduced on top of the coloured spectrogram image merely shows the relative variation of loudness but does not allow one to discern any specific ‘sound’.
• It is unlikely that anybody, even a superior specialist could on the basis of the spectrogram alone and without technical means, reproduce the sound.
• The representation is not easily accessible. The image does not make it possible for a competitor to transform the image into a sound, at least in his brain for himself, or otherwise by transforming it into a sound through technical means.
• The Board does not see any technical means by which such an image could be retransmitted or re-converted into a sound. It is not enough if the image filed would  represent a given sound, as long as it is not possible to retransform the image into a sound.
• The Applicant’s reliance on Article of Wikipedia about sonograms is not relevant. Wikipedia states that spectrograms can be turned into a sound, but it does not state that this will be exactly the same sound. It may be any sound making notion of spectrograms practically useless.
• Under ‘Creating sound from a spectrogram’, the ‘Wikipedia’ article refers to various software programs. However, none of them promises that they could transform spectrogram files into the underlying sound.
• Even if that was technically possible, it would still not render the filed representation ‘self-contained’ as this criterion requires the intelligibility of the sound without external technical support such as the installation of specific software.
• The contention that ‘everybody knew the Tarzan Yell’ is misplaced. This is for the reason that:
  • Alleged Knowledge cannot make a non-self–contained image capable of representing a sound;
  • There is no evidence that everyone knows the ‘Tarzan Yell’;
  • By making such an argument the Applicant relies not on a graphic representation, but on the memory in the mind of an average consumer who remembers the ‘Tarzan yell’. This means the sound itself, if heard, is distinctive. But for that it must be able to be heard in the first place.
  • The ‘Tarzan yell’ may take various forms. There have been around 6 Tarzan Movies. The Applicant does not indicate which actor’s yell or the yell from which movie he wants to protect.
  • Argument on well-known character of ‘Tarzan’ are on distinctiveness. However, the present matter is concerned with the representation and not unique source identification of the Tarzan Yell.

The representation of a sound by any way other than musical notation is so difficult that the legislature has allowed filing of sound file electronically in 2005. This makes it easily accessible and self-contained.

[1] Yell of the Fictional Character Tarzan

[2] The marks was described as ‘The mark consists of the yell of the fictional character TARZAN, the yell consisting of five distinct phases, namely sustain, followed by ululation, followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by the representations set out below, the upper representation being a plot, over the time of the yell, of the normalised envelope of the air pressure waveform and the lower representation being a normalised spectrogram of the yell consisting of a three-dimensional depiction of the frequency content (colours as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis).’