Tarzan’s distinctive yell cannot be registered as a trade mark because it is almost impossible to represent graphically. Sounds can be registered as trade marks, but the ruling 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 trade mark 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 trade marks they generally think of words or logos, and indeed the vast majority of registered trade marks are made up of simple word marks and logos,” he said. “However, in theory a registered trade mark can consist of anything which distinguishes one undertaking from that of another undertaking."
“The Intel and Direct Line jingles have been registered as trade marks; the shape of a Coca Cola bottle is a registered trade mark and even the gesture of person touching their nose has been registered as a trade mark 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 can not 'read' sonograms,” he said.
The ‘Sieckmann test’ is a result of Ralf Sieckmann’s attempt to register a smell as a trade mark. In that case, heard by the ECJ, a seven-point test for trade mark 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 trade mark-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.