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22 April, 2017
Sound marks were introduced by the Trademark Law, which came into effect on May 1 2014. Article 8 provides that:
an application may be made to register as a trademark any sign, including any word, device, any letter of the alphabet, any number, three-dimensional symbol, colour combination and sound, or any combination thereof, that identifies and distinguishes the goods of a natural person, legal person or other organization from those of others.
The Chinese Trademark Office is said to have accepted 450 sound mark applications up to January 2016. Almost two years after they were introduced, the first sound mark was granted preliminary approval and published on February 13 2016.
This sound mark is owned by China Radio International (CRI). The application was filed as a multi-class application in Classes 35, 38, 41 and 42. The mark has been approved only in respect of “radio broadcasting; television broadcasting; information about telecommunication; etc.” in Class 38 and “radio entertainment; production of music; etc.” in Class 41. The sound is described as the opening music of CRI’s broadcast programmes. It lasts for 40 seconds and consists of a piece of music together with a voice announcing the full Chinese name of CRI towards the end of the tune.
The Chinese Trademark Office is said to have issued the examination criteria for sound marks on a trial basis. Unlike traditional trademarks, sound marks are not visual so applicants must ensure that the sounds are represented accurately. In addition to providing a sample of the sound – by way of a read-only CD or a wav or mp3 audio file, if the application is submitted electronically – the applicant must provide a representation of the sound mark, which should consist of a stave or numbered musical notation for musical sounds and a written description of both musical sounds and non-musical sounds. For example, CRI’s mark consists of both a musical sound and non-musical sound and the mark is represented by both a stave and a detailed written description. Another requirement for a sound mark application is that it indicate how the mark is to be used.
The above requirements can be satisfied by careful preparation of the application materials. The main issue, however, is whether the sound is registrable as a trademark. The considerations here echo those relating to word or device marks in traditional trademark applications. For example, the following are generally prohibited from being used or registered as trademarks:
- sounds that are identical or similar to the national anthem or military songs of China;
- sounds that are identical or similar to the national anthems ormilitary songs of other countries; and
- sounds that have adverse influence, such as religious music or sounds of terror or violence.
- As with any other trademark, a sound mark must be sufficiently distinctive for registration and must not conflict with any earlier right. The following are considered as being devoid of distinctive character:
- a sound that merely directly describes the characteristics of the goods or services (eg, the sound of piano playing for musical instruments or the sound of children laughing for milk powder for babies);
- a simple and ordinary tone or melody;
- a complete or lengthy piece of music or song;
- an ordinary slogan expressed in ordinary tones; and
- a sound or piece of music that is commonly used in the industry.
The main difficulty of registering a sound mark relates to its distinctiveness. As mentioned above, the trademark application must indicate how the mark is used. For products that do not emit sounds (eg, cosmetics, clothing or milk), the sound mark will probably be indicated as being used in commercials. In such cases, the mark can easily be regarded as non-distinctive because the sound would likely be regarded simply as background music in the commercial, rather than as a badge of trade origin. Even for products that can emit sounds (eg, mobile phones or computers), the sounds would likely be regarded as merely sounds which signal that the goods are in operation, and nothing more. This difficulty can best be illustrated by the Chinese Trademark Office’s comment that, in usual circumstances, sound marks can achieve distinctiveness only through long use.
The question thus remains as to how CRI’s sound mark managed to be registered. The reasons have not been made public, but it is possible to venture a conjecture. One possible explanation is that the mark consists of the full Chinese name of CRI. This verbal element might help to enhance the distinctiveness of the mark; otherwise, the mark might simply be regarded as some music being broadcast. The sound mark is used as the opening music of broadcast programmes, which may explain why registration for services in Classes 35 and 42 and some services in Class 41 – such as training – was refused. Finally, CRI is the only state radio and television media organisation which specialises in international communications. The fact that CRI is a significant state-owned broadcaster may have helped in the success of this application. Therefore, despite this success, it would be premature to conclude that more and more sound marks will be allowed registration on a prima facie basis. The Chinese Trademark Office has made it clear that unless the public is educated as to the link between the sound and the undertaking, the sound is unlikely to be registered as a trademark.
This article was first published in World Trademark Review.
Ai-Leen Lim, ACEO and Principal Counsel AWA Asia
ai-leen.lim@awapatent.com
