CELEX: 62001CJ0283
Trade marks
Approximation of laws
Directive 89/104/EEC
Article 2
Signs of which a trade mark may consist
Signs capable of being represented graphically
Sound signs
Musical notation
Written description
Onomatopoeia

By judgment of 13 July 2001, received at the Court on 18 July 2001, the Hoge Raad der Nederlanden (Netherlands) referred to
the Court under Article 234 EC two questions for a preliminary ruling on the interpretation of Article 2 of First Council
Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40,
p. 1;
the Directive).
Those question were raised in proceedings between Shield Mark BV (
Shield Mark) and Mr Kist, trading as Memex, concerning the latter's use in the course of his trade of signature tunes (jingles) previously
registered by Shield Mark at the Benelux Trade Marks Office (
BBM) as sound marks.
Legal framework
Community legislation
According to the first recital in the preamble to the Directive, the purpose of the Directive is to approximate the laws of
Member States on trade marks in order to remove the disparities capable of impeding the free movement of goods and freedom
to provide services and distorting competition within the common market.  However, as indicated in the third recital, the
Directive does not seek to achieve full-scale approximation of those laws.
The seventh recital to the Directive states that
attainment of the objectives at which this approximation of laws is aiming requires that the conditions for obtaining and
continuing to hold a registered trade mark are, in general, identical in all Member States and that,
to this end, it is necessary to list examples of signs which may constitute a trade mark, provided that such signs are capable
of distinguishing the goods or services of one undertaking from those of other undertakings.
Article 2 of the Directive, entitled
Signs of which a trade mark may consist, contains the list of examples referred to in the seventh recital.  It provides: A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names,
designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing
the goods or services of one undertaking from those of other undertakings.
Article 3 of the Directive, entitled
Grounds for refusal or invalidity, provides in paragraph 1(a) and (b): The following shall not be registered or if registered shall be liable to be declared invalid:
(a)
signs which cannot constitute a trade mark;
(b)
trade marks which are devoid of any distinctive character
.
Legislation applicable to Benelux
The Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands laid down their trade marks law in
a common law, the uniform Benelux law on trade marks (Trb. 1962, 58, and Trb. 1983, 187;
the LBM), and responsibility for its implementation was entrusted to a common institution, the BBM.
The LBM was amended, with effect from 1 January 1996, by the Protocol of 2 December 1992 amending that law (Trb. 1993, 12,
the Protocol), in order to transpose the Directive into the legal order of those three Member States.
However, it was not deemed necessary to amend the LBM for the purpose of expressly transposing Articles 2 and 3 of the Directive.
In that regard, the sixth and seventh subparagraphs of point I.2 of the grounds of the Protocol provide: Article 2 of the Directive, concerning signs which may be protected, does not require amendment of the LBM.  The wording of
that article corresponds almost wholly with Article 1 of the LBM.  While it is true that, unlike Article 2 of the Directive,
Article 1 of the LBM does not require that the signs be capable of being represented graphically, in practice signs are none
the less required to satisfy that requirement in order to benefit from protection as a trade mark.Nor did Article 3 of the Directive entail an amendment of the LBM.  The absolute grounds for refusal or invalidity set out
in the first paragraph of that article may be found in Articles 1 and 4(1) and (2), taken together with Article 14(A)(1) of
the LBM. ...
Article 1 of the LBM, which was not thus amended by the Protocol, provides in the first paragraph: Denominations, designs, prints, seals, letters, numbers, shapes of products or of packaging and all other signs serving to
distinguish an undertaking's products shall be regarded as individual trade marks.
Article 1(b) of the regulation implementing the LBM provides that
[t]he Benelux deposit of a trade mark shall be done in French or Dutch by production of a document bearing ... a reproduction
of the trade mark.
Although, before the entry into force of the Protocol on 1 January 1996, the BBM did not carry out a substantive check of
the registration of a trade mark, such a check, where necessary, being made
ex post facto
, on the occasion of an invalidity action or in a counterclaim action in a case involving breach of the rights of the holder
of the trade mark, it now examines applications on the basis of the absolute grounds for refusal laid down in the LBM.
As regards sound marks, the BBM initially considered that they could be registered.  However, following the judgment of the
Gerechtshof te's Gravenhage (Regional Court of Appeal) (Netherlands) of 27 May 1999, delivered in proceedings between the
parties to the main proceedings, the BBM has generally refused to register sound marks.
Main proceedings and questions referred to the Court
Shield Mark is the holder of 14 trade marks registered at the BBM, the first on 5 June 1992 and the most recent on 2 February
1999, for various products and services in Classes 9 (computer software (recorded), etc.), 16 (magazines, newspapers, etc.),
35 (publicity, business management, etc.), 41 (education, training, organisation of seminars on publicity, marketing, intellectual
property and communications in the business sector, etc.) and 42 (legal services) of the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as amended and modified.
Four of those trade marks consist of a musical stave with the first nine notes of the musical composition
Für Elise, by Ludwig van Beethoven.  Two of them also state:
Sound mark.  The trade mark consists of the representation of the melody formed by the notes (graphically) transcribed on
the stave, plus, in one case,
played on a piano.
Four other trade marks consist of the first nine notes of
Für Elise.  Two of them also state:
Sound mark.  The trade mark consists of the melody described, plus, in one case,
played on a piano.
Three further marks consist of the sequence of musical notes
E, D#, E, D#, E, B, D, C, A.  Two of them also state:
Sound mark.  The trade mark consists of the reproduction of the melody formed by the sequence of notes as described, plus, in one case,
played on a piano.
Two of the trade marks registered by Shield Mark consist of the denomination
Kukelekuuuuu (an onomatopoeia suggesting, in Dutch, a cockcrow).  One of them states:
Sound mark, the trade mark consists of an onomatopoeia imitating a cockcrow.
Last, one mark consists of a
cockcrow and also states:
Sound mark, the trade mark consists of the cockcrow as described.
In October 1992, Shield Mark launched a radio advertising campaign, each of its commercials beginning with a signature tune
employing the first nine notes of
Für Elise.  Furthermore, from February 1993 Shield Mark has issued a news sheet describing the services which it offers on the market.
Its news sheets are displayed on stands in bookshops and newspaper kiosks and the signature tune is heard each time a news
sheet is removed from the stand.  Last, Shield Mark publishes software for lawyers and marketing specialists and each time
the disk containing the software starts up a cockcrow is heard.
Mr Kist, who operates as a communications consultant, in particular in advertising law and trade marks law, organises seminars
on intellectual property and marketing and publishes a review dealing with those matters.
During an advertising campaign which began on 1 January 1995, Mr Kist used a melody consisting of the first nine notes of
Für Elise and also sold a computer program which, when starting up, emits a cockcrow.
Shield Mark brought an action against Mr Kist for infringement of its trade mark and unfair competition.
By judgment of 27 May 1999, the Gerechtshof te's Gravenhage granted Shield Mark's application in so far as it was based on
the law of civil responsibility, but dismissed it in so far as it was based on trade marks law, on the ground that it was
the intention of the Governments of the Member States of Benelux to refuse to register sounds as trade marks.
Shield Mark appealed to the Hoge Raad der Nederlanden, which decided to stay proceedings and to refer the following questions
to the Court for a preliminary ruling:
1.
(a)
Must Article 2 of the Directive be interpreted as precluding sounds or noises from being regarded as trade marks?
(b)
If the answer to question 1(a) is in the negative, does the system established by the Directive require that sounds or noises
must be capable of being regarded as trade marks?
2.
(a)
If the answer to question 1(a) is in the negative, what requirements does the Directive lay down for sound marks as regards
the reference in Article 2 to the need for the sign to be capable of being represented graphically and, in conjunction therewith,
as regards the way in which the registration of such a trade mark must take place?
(b)
In particular, are the requirements referred to in (a) satisfied if the sound or the noise is registered in one of the following
forms:
─
musical notes;
─
a written description in the form of an onomatopoeia;
─
a written description in some other form;
─
a graphical representation such as a sonogram;
─
a sound recording annexed to the registration form;
─
a digital recording accessible via the internet;
─
a combination of those methods;
─
some other form and, if so, which?
First question
By part (a) of its first question, the national court is asking whether Article 2 of the Directive must be interpreted as
precluding sound signs from being regarded as trade marks.  In the event that the answer is in the negative, it asks, by part
(b) of its first question, whether that article implies that sound signs must be capable of being regarded as trade marks.
Observations submitted to the Court
According to Shield Mark, it follows from the seventh recital to the Directive that Article 2 thereof does not contain an
exhaustive list of signs of which a trade mark may consist.  Accordingly, all signs capable of serving to distinguish an undertaking's
products or services from those of other undertakings may, in principle, serve as trade marks.  It follows, in its submission,
that since sound signs are clearly capable of doing so they may fulfil the role of a trade mark.
That interpretation is supported, in particular, by the Opinion of Advocate General Ruiz-Jarabo Colomer in Case C-273/00
Sieckmann
[2002] ECR I-11737, by the preliminary work on the Directive and the Council documents available to the public concerning
the adoption of both the Directive and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ
1994 L 11, p. 1), and also by the Examination Guidelines of the Office for Harmonisation in the Internal Market (Trade Marks
and Designs) (OHIM).
The Netherlands, French, Italian, Austrian and United Kingdom Governments maintain that sounds are capable of distinguishing
products or services of one undertaking from those of other undertakings.  As the list of signs of which a trade mark may
consist in Article 2 of the Directive is merely indicative, sounds may constitute trade marks.
The French and Austrian Governments further state that, owing to the objective of the Directive, which is to approximate the
laws of the Member States relating to trade marks, sounds must be capable of being regarded as trade marks provided that they
are capable of being represented graphically.
The Commission observes that Article 2 of the Directive requires that, in order to be registered as a trade mark, a sign must
be capable of being represented graphically and capable of distinguishing the goods or services of one undertaking from those
of other undertakings.  In its view, it follows from the system established by Articles 2 and 3 of the Directive that distinctive
character for the purposes of Article 2, unlike Article 3, does not relate to whether a sign may actually assume a distinctive
character for the goods or services for which its registration as a trade mark is sought, but rather to the possession, by
the sign in question, of a distinctive character in general terms, irrespective of the various categories of products or services.
Sounds and noises are perceptible by human beings, who are able to remember them, and they allow the goods or services of
one undertaking to be distinguished from those of other undertakings.  Furthermore, they are capable of being represented
graphically.
Since the list of signs of which a trade mark may consist in Article 2 of the Directive is not limitative, the Commission
infers that signs consisting of sounds or noises are in principle capable of being registered as trade marks, on condition
that they are capable of distinguishing goods or services without any risk of confusion and that they are capable of being
represented graphically in a clear, precise and stable manner which allows third parties to understand without difficulty
what trade mark is being protected.
The Court's response
As regards the first question, the purpose of Article 2(a) of the Directive is to define the types of signs of which a trade
mark may consist. That provision states that a trade mark may consist of
particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging .... Admittedly, that provision mentions only signs which are capable of being perceived visually, are two-dimensional or three-dimensional
and can thus be represented by means of letters or written characters or by a picture (
Sieckmann
, cited above, paragraph 43).
However, as is clear from the language of both Article 2 of the Directive and the seventh recital in the preamble thereto,
which refers to a
list [of] examples of signs of which a trade mark may consist, that list is not exhaustive. Consequently, that provision, although it does not
mention signs which are not in themselves capable of being perceived visually, such as sounds, does not, however, expressly
exclude them (see, to that effect, regarding olfactory signs,
Sieckmann
, paragraph 44).
Furthermore, as Shield Mark, the intervening Governments and the Commission have stated, sound signs are not by nature incapable
of distinguishing the goods or services of one undertaking from those of other undertakings.
In those circumstances, Article 2 of the Directive must be interpreted as meaning that sounds may constitute a trade mark,
on condition that they may also be represented graphically, a question to be dealt with when the Court considers the second
question.
As regards part (b) of the first question, Article 2 of the Directive does not preclude the registration of sounds as trade
marks.  Consequently, the Member States cannot preclude such registration as a matter of principle.
Although the Directive does not seek to achieve full-scale approximation of the laws of the Member States relating to trade
marks, it is clear from the seventh recital to the Directive that the conditions for obtaining and continuing to hold a trade
mark are to be the same in all the Member States.
In that regard, as the French Government has observed, the nature of the signs of which a trade mark may consist cannot differ
from one Member State to another.
The answer to the first question must therefore be that Article 2 of the Directive is to be interpreted as meaning that sound
signs must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services
of one undertaking from those of other undertakings and are capable of being represented graphically.
Second question
By its second question, the national court is asking the Court to state the conditions on which a sound sign is capable of
being represented graphically within the meaning of Article 2 of the Directive and, in particular, whether musical notes,
a written description in the form of an onomatopoeia, a written description in some other form, a graphical representation
such as a sonogram, a sound recording annexed to the registration form, a digital recording accessible via the internet, a
combination of those methods, or any other form meet the requirements of graphical representation.
Observations submitted to the Court
First of all, Shield Mark, the intervening Governments and the Commission agree that any graphical representation of a sound
sign must satisfy various requirements in order for the sign to be capable of being a trade mark.
Thus, in Shield Mark's submission, the graphical representation must be clear, precise and comprehensible, without undue effort,
to third parties.  According to the Netherlands Government, it must be complete, clear and precise, so that it is possible
to know to what the exclusivity of the holder of the trade mark relates, and intelligible to those with an interest in consulting
the trade mark register.  The French Government claims that the graphical representation must be clear and precise, although
it is not essential that the perception of the sign be immediate for the public; furthermore, the protected sign must be intelligible.
The Italian Government submits that the representation must be suitable for expressing the sound, for rendering it comprehensible
and for distinguishing it.  The Austrian Government maintains that the sound of a sound sign must be clear from a graphical
representation or must be capable of being inferred with sufficient clarity, so that the scope of such protection as the trade
mark may afford is recognisable with sufficient precision.  According to the United Kingdom Government, the graphical representation
must be sufficiently complete in itself, clear, precise and understood, without undue effort, by persons consulting the trade
mark register.  Last, the Commission claims that the representation must be clear, precise and stable and must allow third
parties to understand without difficulty what the protected trade mark is.
As regards, second, the acceptable forms of graphical representation of sound signs, Shield Mark, the French, Austrian and
United Kingdom Governments and the Commission maintain that a musical stave constitutes a graphical representation for the
purposes of Article 2 of the Directive.
Shield Mark and the French Government, unlike the United Kingdom Government and the Commission, take the view that a reference
to a well-known work, such as
the first nine notes of
Für Elise, constitutes a graphical representation.
Unlike the French and United Kingdom Governments, Shield Mark and the Commission maintain that the description of a tune by
the transcription of the notes of which it is composed, such as
E, D#, E, D#, E, B, D, C, A must be regarded as a graphical representation of the melody concerned.
Shield Mark and the French and Austrian Governments accept, in essence, that a sonogram constitutes a graphical representation,
while the Austrian Government further states that such a sign may be registered provided that it is accompanied by an acoustic
reproduction on a data carrier, and the French Government states that this mode of representation might be accompanied by
a sound recording or a digital recording.  The United Kingdom Government, on the other hand, maintains that, generally, this
form of graphical representation cannot be accepted and the Commission rejects the contention that, at the current stage of
technology, a sonogram may be an acceptable form of graphical representation when filing a sign for registration as a trade
mark.
Unlike the French and Austrian Governments, Shield Mark and, in certain circumstances (where the description is clear and
unambiguous), the United Kingdom Government and the Commission take the view that an onomatopoeia is also capable of being
registered.
As regards a sound recording annexed to the registration form, the French Government submits that it might accompany a sonogram
or a spectrogram and the Austrian Government maintains that it must be annexed to a sonogram.  On the other hand, this purported
mode of
graphical representation is disputed as a means of filing an application for a sign as a trade mark by Shield Mark, the United Kingdom Government
and the Commission.
The Court's response
As a preliminary observation, it is to be remembered that, in the context of the cooperation between the Court of Justice
and the national courts provided for by Article 234 EC, it is solely for the national court before which the dispute has been
brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular
circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance
of the questions which it submits to the Court.  Consequently, where the questions submitted by the national court concern
the interpretation of Community law, the Court of Justice is, in principle, bound to give a ruling (see, inter alia, Case
C-415/93
Bosman
[1995] ECR I-4921, paragraph 59).
Nevertheless, the Court has taken the view that, in order to determine whether it has jurisdiction, it should examine the
conditions in which the case was referred to it by the national court.  The spirit of cooperation which must prevail in the
preliminary-ruling procedure requires the national court, for its part, to have regard to the function entrusted to the Court
of Justice, which is to assist in the administration of justice in the Member States and not to deliver advisory opinions
on general or hypothetical questions (see, inter alia,
Bosman
, cited above, paragraph 60).
The Court may therefore decline to rule on a question referred by a national court for a preliminary ruling where, inter alia,
the problem is hypothetical (see, inter alia, Case C-111/01
Gantner Electronic
[2003] ECR I-4207. paragraph 36).
In the present case, Shield Mark did not file an application for registration in the form of a sonogram, a sound recording,
a digital recording or a combination of those methods, so that, in the absence of relevance, an answer cannot be provided
to the question in so far as it relates to those modes of representation.
As regards, in the first place, the requirements to be satisfied by any graphical representation, the Court held in
Sieckmann
, cited above, which concerned olfactory signs, that Article 2 of the Directive must be interpreted as meaning that a trade
mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented
graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained,
easily accessible, intelligible, durable and objective.
Those conditions are also binding on sound signs, which, like olfactory signs, are not in themselves capable of visual perception.
As regards, in the second place, acceptable forms of graphical representation, although it is for the national court to determine,
in each specific case before it, whether the sign was capable of constituting a trade mark and could therefore be validly
registered, the Court is none the less competent to provide guidance as to whether a representation by means of musical notes
or a representation using the written language constitutes a graphical representation of a sound sign for the purposes of
Article 2 of the Directive.
It must be emphasised at the outset that a sign cannot be registered as a sound mark where the applicant has failed to state
in the application for registration that the sign in question must be understood as being a sound sign.  In such a case, the
competent trade mark registration authority, and the public, in particular traders, are entitled to consider that it is a
word mark or a figurative mark as represented graphically in the application for registration.
As regards, first, the representation of a sound sign by a description using the written language, it cannot be precluded
a priori that such a mode of graphical representation satisfies the requirements defined at paragraph 55 of this judgment.
However, in the case of signs such as those at issue in the main proceedings, a graphical representation such as
the first nine notes of
Für Elise or
a cockcrow at the very least lacks precision and clarity and therefore does not make it possible to determine the scope of the protection
sought.  Accordingly, it cannot constitute a graphical representation of that sign for the purposes of Article 2 of the Directive.
As regards, next, an onomatopoeia, it must be held that there is a lack of consistency between the onomatopoeia itself, as
pronounced, and the actual sound or noise, or the sequence of actual sounds or noises, which it purports to imitate phonetically.
Thus, where a sound sign is represented graphically by a simple onomatopoeia, it is not possible for the competent authorities
and the public, in particular traders, to determine whether the protected sign is the onomatopoeia itself, as pronounced,
or the actual sound or noise.  Furthermore, an onomatopoeia may be perceived differently, depending on the individual, or
from one Member State to another.  That is so in the case of the Dutch onomatopoeia
Kukelekuuuuu, which seeks to transcribe a cockcrow, and which is very different from the corresponding onomatopoeia in the other languages
used in the Benelux Member States.  Consequently, a simple onomatopoeia cannot without more constitute a graphical representation
of the sound or noise of which it purports to be the phonetic description.
As regards, last, musical notes, which are a common method of representing sounds, a sequence of notes without more, such
as
E, D#, E, D#, E, B, D, C, A, does not constitute a graphical representation for the purposes of Article 2 of the Directive either.  Such a description,
which is neither clear, nor precise nor self-contained, does not make it possible, in particular, to determine the pitch and
the duration of the sounds forming the melody in respect of which registration is sought and which constitute essential parameters
for the purposes of knowing the melody and, accordingly, of defining the trade mark itself.
On the other hand, a stave divided into bars and showing, in particular, a clef (a treble clef, bass clef or alto or tenor
clef), musical notes and rests whose form (for the notes: semibreve, minim, crotchet, quaver, semiquaver, etc.; for the rests:
semibreve rest, minim rest, crotchet rest, quaver rest, etc.) indicates the relative value and, where appropriate, accidentals
(sharp, flat, natural) ─ all of this notation determining the pitch and duration of the sounds ─ may constitute a faithful
representation of the sequence of sounds forming the melody in respect of which registration is sought.  This mode of graphical
representation of the sounds meets the requirements of the case-law of the Court that such representation must be clear, precise,
self-contained, easily accessible, intelligible, durable and objective.
Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible, thus allowing
the competent authorities and the public, in particular traders, to know precisely the sign whose registration as a trade
mark is sought.
The answer to the second question must be that:
─
Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable
of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters,
and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective;
─
in the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description
using the written language, such as an indication 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 by means of a simple onomatopoeia, without more, or by means of a sequence
of musical notes, without more.  On the other hand, those requirements are satisfied where the sign is represented by a stave
divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value
and, where necessary, accidentals.
Costs
The costs incurred by the Netherlands, French, Italian, Austrian and United Kingdom Governments and by the Commission, which
have submitted observations to the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings,
a step in the action pending before the national court, the decision on costs is a matter for that court.
On those grounds,
THE COURT (Sixth Chamber),
in answer to the questions referred to it by the Hoge Raad der Nederlanden by judgment of 13 July 2001, hereby rules:
1.
Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating
to trade marks is to be interpreted as meaning that sound signs must be capable of being regarded as trade marks provided
that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are
capable of being represented graphically.
2.
Article 2 of Directive 89/104 must be interpreted as meaning that a trade mark may consist of a sign which is not in itself
capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines
or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and
objective.
In the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description
using the written language, such as an indication 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 by means of a simple onomatopoeia, without more, or by means of a sequence
of musical notes, without more.  On the other hand, those requirements are satisfied where the sign is represented by a stave
divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value
and, where necessary, accidentals.
Skouris
Cunha Rodrigues
Puissochet
Schintgen
Macken
Delivered in open court in Luxembourg on 27 November 2003.
R. Grass
V. Skouris
Registrar
President
–
Language of the case: Dutch.