Federal Administrative Court grabs IPI by the ears
The Intellectual Property Institute’s current practice is a thorn in the side of all those who want to protect sounds and noises as acoustic trademarks. Now the Federal Administrative Court has reined in the IGE, paving the way for questions of principle.
Since the IPI tightened the guidelines for acoustic trademarks in June 2005, sound sequences are only permitted for registration in conjunction with speech elements. Without these, the distinctiveness of melodies is not guaranteed.
Acoustic signs with a long tradition
Catchy tunes à la "Haribo makes children happy" in honor: Such a principled refusal to use non-linguistic audio cues is absurd. From calls to prayer and hunting appeals to alarm signals: for centuries, sounds without a linguistic background have been easily identified. Today, they make up the lion's share of acoustic branding and are based on this tradition. Hardly anyone in this country will have trouble identifying the SBB gong, the Postbus melody or the Swisscom tone sequence.
In Switzerland, there are a dozen sound marks compared to over 200,000 figurative, word or combined marks. Why the IPI maintains the strictest practice in Europe for sound marks remains a mystery. A German confectionery manufacturer, whose sound mark enjoys protection in the rest of Europe, was refused registration in Switzerland by the IPI. The company appealed to the Federal Administrative Court (FAC), creating the first Swiss precedent for sound marks.
Rebuke to the IPI
The judges consider the IPI's practice to be too restrictive. The IPI wrongly assumes an exclusive use of sound marks in advertising and equates linguistic elements with enhanced distinctiveness. The Federal Administrative Court concludes: "The distinctiveness of sound marks cannot be assessed solely on the basis of the use or non-use of linguistic elements." Non-linguistic acoustic signs would increasingly contribute to the identification of goods and services in everyday traffic and in the operation of devices.
Characteristics as a prerequisite
Surprisingly, however, the judges also refused the trademark registration application in the second instance, which means that the hoped-for paradigm shift is a long way off. According to the Federal Administrative Court, simple melodies require unusual and characteristic features for trademark protection. Sound sequences are all the more recognizable the more they deviate from everyday standard signals due to alienation, special sound quality or sound combinations.
Timbre plays an important role
Sounds good. But uncommon and atonal, alienated sounds will not be heard by the IGE if they cannot be visualized by means of a score. The scores, in turn, say little about the timbre, which plays an important role in the differentiation of sound marks.
The Federal Administrative Court's rejection argument thus remains a wide open field for interpretation: "The sequence of notes is perceived more as a play around or banal ornamentation of the fundamental 'F sharp' than as a melody. Since it contains neither a modulation of the key nor any other striking or unexpected development that could particularly shape the memory, other voices, instrumentation and dynamic indications are missing and the phrasing signs used in the musical notation only indicate that the corresponding notes are played briefly, which is hardly noticeable in the sales environment of confectionery, this mark will be perceived by the target customer circles as decoration and mood setting and will neither stick in the memory nor serve to distinguish the goods marked with it. The mark is therefore common property."
Very few of the established audio brands would meet the judges' requirements. It is advisable to bring the judges into the creation team. Who knows better what makes a good sound mark or the memory of it ...
Acoustic signs with a long tradition
Catchy tunes à la "Haribo makes children happy" in honor: Such a principled refusal to use non-linguistic audio cues is absurd. From calls to prayer and hunting appeals to alarm signals: for centuries, sounds without a linguistic background have been easily identified. Today, they make up the lion's share of acoustic branding and are based on this tradition. Hardly anyone in this country will have trouble identifying the SBB gong, the Postbus melody or the Swisscom tone sequence.
In Switzerland, there are a dozen sound marks compared to over 200,000 figurative, word or combined marks. Why the IPI maintains the strictest practice in Europe for sound marks remains a mystery. A German confectionery manufacturer, whose sound mark enjoys protection in the rest of Europe, was refused registration in Switzerland by the IPI. The company appealed to the Federal Administrative Court (FAC), creating the first Swiss precedent for sound marks.
Rebuke to the IPI
The judges consider the IPI's practice to be too restrictive. The IPI wrongly assumes an exclusive use of sound marks in advertising and equates linguistic elements with enhanced distinctiveness. The Federal Administrative Court concludes: "The distinctiveness of sound marks cannot be assessed solely on the basis of the use or non-use of linguistic elements." Non-linguistic acoustic signs would increasingly contribute to the identification of goods and services in everyday traffic and in the operation of devices.
Characteristics as a prerequisite
Surprisingly, however, the judges also refused the trademark registration application in the second instance, which means that the hoped-for paradigm shift is a long way off. According to the Federal Administrative Court, simple melodies require unusual and characteristic features for trademark protection. Sound sequences are all the more recognizable the more they deviate from everyday standard signals due to alienation, special sound quality or sound combinations.
Timbre plays an important role
Sounds good. But uncommon and atonal, alienated sounds will not be heard by the IGE if they cannot be visualized by means of a score. The scores, in turn, say little about the timbre, which plays an important role in the differentiation of sound marks.
The Federal Administrative Court's rejection argument thus remains a wide open field for interpretation: "The sequence of notes is perceived more as a play around or banal ornamentation of the fundamental 'F sharp' than as a melody. Since it contains neither a modulation of the key nor any other striking or unexpected development that could particularly shape the memory, other voices, instrumentation and dynamic indications are missing and the phrasing signs used in the musical notation only indicate that the corresponding notes are played briefly, which is hardly noticeable in the sales environment of confectionery, this mark will be perceived by the target customer circles as decoration and mood setting and will neither stick in the memory nor serve to distinguish the goods marked with it. The mark is therefore common property."
Very few of the established audio brands would meet the judges' requirements. It is advisable to bring the judges into the creation team. Who knows better what makes a good sound mark or the memory of it ...
