Safe and Sound

Sound Marks in Australia

In September, IP Australia accepted for registration a trade mark described as “the Trade Mark consists of the sound of a fictitious character saying the word “Simples!” followed by a squeaking sound such as might be expected to be made by a Meerkat or other small animal”. You can listen to this trade mark here.  This application was filed for an array of goods and services by the UK company BGL Group Limited. In recent times, IP Australia has required applicants filing sound marks in Australia to lodge an MP3 which is available for download from the IP Australia website. Applicants can also file something that looks like this:

This application was filed by the German automobile brand BMW and has not yet been accepted, presumably as BMW has not filed an MP3 recording of the trade mark. 

If another company wished to avoid using a trade mark that was deceptively similar to the BMW trade mark, how could it do so unless it was able to understand music? How would a Court determine deceptive similarity if it was not able to hear the sound mark? This is the primary reason why IP Australia will insist that BMW provide an MP3 of the trade mark to enable other consumers to be able to hear the trade mark.

There are 48 registered sound marks in Australia. One recent registration from the Japanese company Uni-Charm Corporation comes with a video that you can watch here. The mark carries a long endorsement regarding the stylized representation of the word “SOFY” in a device.

Australian Courts have not yet had to determine deceptive similarity of sounds and videos. These types of trade marks lead to many questions for Australian practitioners and those filing sound trade marks in Australia:

  1. Would the word “sofy” be deceptively similar to a video that includes the word “sofy” and the sound of someone saying “sofy”?
  2. What additional protection is gained by having a video with a sound and a device that would not otherwise be gained from a regular device mark?
  3. What is the scope of protection obtained by a company that has written out its sound trade mark as a musical composition that the vast majority of people cannot read or understand?

Perhaps one day some of these questions will be answered if a case concerning sound marks reaches the Australian Courts.

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