Shield Mark BV v Joost Kist
A sound can be registered as a trade mark if it is represented graphically by a musical stave with notes, but not by a mere description in words.
Facts
Shield Mark registered several sound trade marks in the Benelux, including the first nine notes of Für Elise by Beethoven, represented in various ways, including by a stave with musical notes, by the words the first nine notes of Für Elise, and by the sound of a cock crowing, represented by the word kukelekuuuuu. Mr Kist, a consultant, used the sounds in his advertising, and Shield Mark sued for infringement.
Legal principle
The Court of Justice held that sound signs can be registered as trade marks, if they are capable of distinguishing goods or services and can be represented graphically in a way that satisfies the Sieckmann criteria. A stave divided into bars and showing a clef, musical notes and rests, whose form indicates the relative value and, where necessary, accidentals, satisfies those requirements. But a written description stating 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 a simple onomatopoeia without more, does not.
Related cases on trade marks: registration
- Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH Case C-529/07, [2009] ECR I-4893
- Hauck GmbH & Co KG v Stokke A/S Case C-205/13, EU:C:2014:2233
- Koninklijke KPN Nederland NV v Benelux-Merkenbureau (Postkantoor) Case C-363/99, [2004] ECR I-1619
- Koninklijke Philips Electronics NV v Remington Consumer Products Ltd Case C-299/99, [2002] ECR I-5475
- Libertel Groep BV v Benelux-Merkenbureau Case C-104/01, [2003] ECR I-3793
- London Taxi Corp Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729, [2018] FSR 7
- Procter & Gamble Co v OHIM (Baby-Dry) Case C-383/99 P, [2001] ECR I-6251
- Sieckmann v Deutsches Patent- und Markenamt Case C-273/00, [2002] ECR I-11737
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