Shield Mark BV v. Joost Kist h o d n Memex;
Case No. C-283/01
European Court of Justice
Registrant (Sheild Mark BV) of the mark had 14 registered trade marks in its favour granted by Benelux Trade Marks Office. The registrations were in Class 9 (computer software (recorded), etc.), 16 (magazines, newspapers, etc.), 35 (publicity, business management, etc.), 41 (education, training, organization of seminars on publicity, marketing, intellectual property and communications in the business sector, etc.) and 42 (legal services).
The details of the same in their form and manner of presentation in application are provided herein below:
- Four on a Musical Stave – The trade marks consisted of the representation of the melody formed by the notes (graphically) transcribed on the stave.
- Four other trade marks consisted of the first nine notes of Für Elise. The trade mark consisted of the melody described, plus, in one case, played on a piano.
- Three further marks consist of the sequence of musical notes E, D#, E, D#, E, B, D, C, A. The trade marks consisted of the reproduction of the melody formed by the sequence of notes.
- Two of the trade marks registered by Shield Mark consisted of the denomination Kukelekuuuuu (an onomatopoeia suggesting, in Dutch, a cockcrow)
- Last mark consisted of a cockcrow and also stated: Sound mark, the trade mark consists of the cockcrow as described.
In October 1992, Shield Mark launched a radio advertising campaign, each of its commercials beginning with a signature tune employing the first nine notes of Für Elise. From February 1993, Shield Mark issued a news sheet describing the services which it offers on the market. The signature tune is heard each time a news sheet is removed from the stand. Further, Shield Mark also published softwares for lawyers and marketing specialists and each time the disk containing the software started a cockcrow was heard.
Mr Kist, was a communications consultant, in particular in advertising law and trade marks law. During an advertising campaign in 1995, Mr Kist used a melody consisting of the first Nine notes of Für Elise and also sold a computer program which on emitted a cockcrow. Shield Mark brought an action against Mr Kist for infringement of its trade mark and unfair competition. Court of the Hague, Netherlands ruled in favour of Sheild Mark on the basis of law of civil responsibility but dismissed its claims based on trade mark law on the ground that it was the intention of the Governments of Members of Benelux to refuse to register sounds as trade marks.
Shield Mark BV appealed to the Supreme Court of Netherlands, which stayed the proceedings and referred some questions to the European Court of Justice for determination. The same are reproduced herein below:
- Must Article 2 of the Directive be interpreted as precluding sounds or noises from being regarded as trade marks?
2A. If the answer to question 1(a) is in the negative, what requirements does the Directive lay down for sound marks as regards the reference in Article 2 to the need for the sign to be capable of being represented graphically and, in conjunction therewith, as regards the way in which the registration of such a trade mark must take place?
2B.In particular, are the requirements referred to in (a) satisfied if the sound or the noise is registered in one of the following forms: musical notes; a written description in the form of an onomatopoeia; a written description in some other form; a graphical representation such as a sonogram; a sound recording annexed to the registration form; a digital recording accessible via the internet; a combination of those methods; some other form and, if so, which?
The Court answered the first question by stating Article 2 of the Directive is to be interpreted as meaning that sound signs must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are capable of being represented graphically. The ECJ also held that the Member States cannot preclude such registration as a matter of principle.
The reasoning of the European Court of Justice to arrive at such a finding can be summarized as under:
- The Court followed the Sieckmann Case where it held that olfactory marks are capable of registration as they are not expressly excluded from Article 2 of the Directive. Similarly, as sound marks were not expressly excluded they were held to be under the realm of Article 2 of the Directive.
- The Intervening Member States argued that sound signs are not by nature incapable of distinguishing the goods or services of one undertaking from those of other.
The Court answered the second question by stating that Article 2 of the Directive must be interpreted as meaning that 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 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, accidentals.
The Court did not rule on the aspect whether filing of an application by way of sonogram, a sound recording, a digital recording or a combination of those methods would be acceptable for accepting an application for registration of a sound mark in lieu of ‘graphical representation’ as the same was hypothetical to the facts as Shield Mark BV never applied for registration of its sound marks through these modes.
The reasoning of the European Court of Justice to arrive at the finding in the second question can be summarized as under:
- The Court followed the Sieckmann Case and said that a trade mark may consist of sign which is not capable of being visually perceived 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.
- Those conditions are also binding on sound signs
- A graphical representation such as the first nine notes of Für Elise or a cockcrow at the very least lacks precision and clarity and therefore does not make it possible to determine the scope of the protection sought
- A sequence of notes without more, such as E, D#, E, D#, E, B, D, C, A is neither clear, nor precise nor self contained and does not make it possible to determine the pitch and the duration of the sounds forming the melody.
- Lack of consistency between the onomatopoeia itself, as pronounced, and the actual sound or noise. Thus, where a sound sign is represented graphically by a simple onomatopoeia, it is not possible for the competent authorities and the public to determine whether the protected sign is the onomatopoeia itself, as pronounced, or the actual sound or noise. Furthermore, an onomatopoeia may be perceived differently.
- A stave divided into bars and showing, in particular, a clef (a treble clef, bass clef or alto or tenor clef), musical notes and rests whose form (for the notes: semibreve, minim, crotchet, quaver, semiquaver, etc.; for the rests: semibreve rest, minim rest, crotchet rest, quaver rest, etc.) indicates the relative value and, where appropriate, accidentals (sharp, flat, natural) ─ all of this notation determining the pitch and duration of the sounds ─ may constitute a faithful representation of the sequence of sounds forming the melody in respect of which registration is sought. This mode meets the requirements of the Court.
- Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible, thus allowing the competent authorities and the public to know precisely the sign whose registration is sought.
 The Benelux Union also known as simply Benelux, is a politico–economic union and formal international intergovernmental cooperation of three neighbouring states Belgium, Netherlands and Luxembourg. (Source: https://en.wikipedia.org/wiki/Benelux) (Last Accessed on: 29th December, 2019)
 In Western Musical Notation, the staff (US) or stave (UK) is a set of five horizontal lines and four spaces that each represent a different musical pitch or in the case of a percussion staff, different percussion instruments. Appropriate music symbols, depending on the intended effect, are placed on the staff according to their corresponding pitch or function. Musical notes are placed by pitch, percussion notes are placed by instrument, and rests and other symbols are placed by convention. (Source: https://en.wikipedia.org/wiki/Staff_(music)) (Last Accessed on: 29th December, 2019)
 the sound of a cock crowing (= making a sound) (Source: https://dictionary.cambridge.org/dictionary/english/cockcrow) (Last Accessed on: 29th December, 2019)
 A clef (from archaic French clef “key”) is a musical symbol used to indicate the pitch of written notes.[a] Placed on a stave, it indicates the name and pitch of the notes on one of the lines. This line serves as a reference point by which the names of the notes on any other line or space of the stave may be determined. (Source: https://en.wikipedia.org/wiki/Clef) (Last accessed on: 29th December, 2019)