Feeds

Tarzan's yell must be written in music for trademark registration

Application denied on appeal

The Power of One Brief: Top reasons to choose HP BladeSystem

Tarzan's distinctive yell cannot be registered as a trademark because it is almost impossible to represent graphically. Sounds can be registered as trademarks, but the ruling (pdf) could limit that to sounds that can be written in standard musical notation.

Tarzan was created by Edgar Rice Burroughs and the application to register as a trademark the sound of the jungle resident's scream was made by Edgar Rice Burroughs Incorporated. The Office for Harmonisation in the Internal Market (OHIM) refused the application on appeal.

The application had included two pictures said to represent the sound of Tarzan's call, one an image of a wave form representation of the sound, the other a spectrogram of the frequencies of the yell.

"What has been filed as a graphic representation is from the outset not capable of serving as a graphic representation of the applied-for sound," said the OHIM ruling. "The examiner was therefore correct to refuse the attribution of a filing date."

All kinds of things can be protected as registered trade marks, according to trade mark attorney Lee Curtis of Pinsent Masons, the law firm behind OUT-LAW.COM. "When people think of trademarks they generally think of words or logos, and indeed the vast majority of registered trademarks are made up of simple word marks and logos," he said. "However, in theory a registered trademark can consist of anything which distinguishes one undertaking from that of another undertaking."

"The Intel and Direct Line jingles have been registered as trademarks; the shape of a Coca Cola bottle is a registered trademark and even the gesture of person touching their nose has been registered as a trademark by the Derbyshire Building Society," said Curtis.

The OHIM ruling creates a problem for people trying to register sound marks that are not music, since it said that musical notation is the valid way to express sound files and some sounds cannot be expressed in that way.

Curtis said that the ruling covers territory which has already been controversial. He said that some previous cases "had suggested that the European Court of Justice (ECJ) would accept that a non-musical sound mark could be adequately represented in a sonogram, which is a three-dimensional pictorial representation of a sound".

"However, the Board of Appeal decision of the Community Trade Mark Office regarding the attempted registration of [non musical sounds] seems to suggest that sonograms are not acceptable. The Board of Appeal clearly states that a sonogram does not fulfil the Sieckmann test, as in contrast to musical notation, most people cannot 'read' sonograms," he said.

The 'Sieckmann test' is a result of Ralf Sieckmann's attempt to register a smell as a trademark. In that case, heard by the ECJ, a seven-point test for trademark registration was established. Trade marks under this test had to be: clear, precise, self-contained, easily accessible, intelligible, durable and objective. This test has been used since then to decide if something is trademark-able, including in the case of sound files.

OHIM said that the pictures produced by Edgar Rice Burroughs Inc. were not self-contained because they could not be used to produce a sound. They were not clear or intelligible either, it said.

Copyright © 2007, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Designing a Defense for Mobile Applications

More from The Register

next story
Adam Afriyie MP: Smart meters are NOT so smart
Mega-costly gas 'n' 'leccy totting-up tech not worth it - Tory MP
Just TWO climate committee MPs contradict IPCC: The two with SCIENCE degrees
'Greenhouse effect is real, but as for the rest of it ...'
'Blow it up': Plods pop round for chat with Commonwealth Games tweeter
You'd better not be talking about the council's housing plans
Arrr: Freetard-bothering Digital Economy Act tied up, thrown in the hold
Ministry of Fun confirms: Yes, we're busy doing nothing
ONE EMAIL costs mining company $300 MEEELION
Environmental activist walks free after hoax sent share price over a cliff
Help yourself to anyone's photos FOR FREE, suggests UK.gov
Copyright law reforms will keep m'learned friends busy
Apple smacked with privacy sueball over Location Services
Class action launched on behalf of 100 million iPhone owners
UK government officially adopts Open Document Format
Microsoft insurgency fails, earns snarky remark from UK digital services head
prev story

Whitepapers

Implementing global e-invoicing with guaranteed legal certainty
Explaining the role local tax compliance plays in successful supply chain management and e-business and how leading global brands are addressing this.
Consolidation: The Foundation for IT Business Transformation
In this whitepaper learn how effective consolidation of IT and business resources can enable multiple, meaningful business benefits.
Application security programs and practises
Follow a few strategies and your organization can gain the full benefits of open source and the cloud without compromising the security of your applications.
How modern custom applications can spur business growth
Learn how to create, deploy and manage custom applications without consuming or expanding the need for scarce, expensive IT resources.
Securing Web Applications Made Simple and Scalable
Learn how automated security testing can provide a simple and scalable way to protect your web applications.