There is one episode of Top Gear that is burnt into my memory: an experiment to determine which genre of music detrimentally impacts a driver. The challenge for Clarkson, Hammond, and May was to drive through an obstacle course within the remits of traffic cones. Interestingly, it was found that classical music made a driver most reckless. I know what you’re thinking. For an experiment to be valid there should be only one variable; and in this experiment, there were two: drivers and music. So perhaps not entirely reliable, but the underlying message was clear: sound can have an unconscious effect on our behaviour.

In a podcast between Steven Bartlett and Julian Treasure,[1] Treasure discusses the four ways in which sound has an impact on human sensitivity:[2]

1. Sound has the ability to influence our physiology. A person’s heart rate will increase when at a rave where the music is pounding between 140-180 beats per minute. Most people also jump when they hear a sudden, loud sound. In both cases, the fight or flight receptors are triggered; cortisol and adrenaline levels increase. The opposite effect is also true. The sound of gentle waves has approximately 12 cycles per minute. This is the same as the breathing frequency of the average human sleeping. Heartrate, brainwaves, breathing, and hormones are all changed by sound.
2. Sound has the ability to influence our psychology. Schubert’s Ave Maria or Bach’s Air may provoke certain emotions. A prayer state can lead to trance state.[3] Singing birds indicate safety and this can make us feel secure, since birds have been around for far longer than humans.
3. Sound has the ability to influence our cognition. We have a very narrow bandwidth for processing auditory influence. Those working in open-plan office spaces are one-third as productive as those in closed spaces. That is a 66% decrease in productivity.
4. Sound has the ability to influence our behaviour. Known as ‘priming’, subtle noise exposure can impact potential customers. In a 1999 study,[4] stereotypical French and German music played in a store on alternative days were found to influence customers’ purchasing decision on wine. On the days where French accordion music was played, French wine outsold German wine by 5:1 – perhaps unsurprisingly considering French wine is more popular. However, on the alternate days, when German oompah music was played, German wine outsold French bottles by 3:1. A massive shift in consumer behaviour, and largely unconscious.

Auditory considerations

Treasure discusses how companies in the food and drink industry use audio or sonic branding. Crisp packets are made crunchy so that we know the potatoes within are crunchy, not soggy. For decades, Tony the Tiger repeated that Kellogg’s cereals are great. Sound and taste are very much entwined.

Sounds that are developed by accident, instead of design, as well as sounds that a business might consider negligible, should not be considered any less associated with a product or company. Treasure highlights some of the following considerations: What noise is your delivery van making in the suburbs; is it peaceful or obnoxious? What sound is your on-hold music or automated call handling? What sounds are playing in your reception waiting area? Does your electric car make so little noise that it becomes dangerous? The wrong sound – one more akin to noise pollution – or lack thereof can be severely damaging to a business, resulting in negative associations or missed opportunities and sales.  

When we think of brands we think through our eyes. Humans are highly ocular and digest information visually. Sound is an emotive layer. The transition of focus by social media companies from photos to videos demonstrates this awareness of how users react when more senses are stimulated and engaged.

Sonic trade marks

With the advancement of technology and the possibility to upload audio files as part of a trade mark application, more companies are taking advantage of the protection afforded to sound marks. Protected famous sound marks include:

• Intel’s jingle, composed by Walter Werzowa, is the tech company’s audio signature and worth hundreds of millions of dollars in brand value – see/ hear the five second audio file at EUTM Registration No. 18498778 covering e.g. hardware; 
• Metro-Goldwyn-Mayer’s lion roar which through consistent use before movies became a familiar sound in households during the 1990s – see/ hear the eight second audio file at EUTM Registration No. 5170113 covering e.g. entertainment services; 
• Netflix’s “tudum” sound, which has been used since 2016 to indicate when a chosen programme is about to start (much in the same way as MGM’s lion) – see/ hear the four second multimedia file at UKTM Registration No. 3437894 covering e.g. streaming services.

Sound is protectable subject matter because of its ability to associate and thereby become a source identifier. In the same way drums were used to signal war, and the same way a cowbell transports me back to being woken by the house matron in boarding school, Netflix’s tudum signals that the stresses of the day are over and it’s time to relax. When a novel sound is repeated to the masses, a link forms – and it is this link which has the potential to become a reputable sonic trade mark. Instead of simply manoeuvring from the Netflix platform into a show, Netflix designed a four second sound that reinforces to its streamers they are not just watching a show, but a show on Netflix. By becoming accustomed to this tudum sound through repetition, Netflix have successfully impregnated our unconscious – and people return to familiarity.

Registrability

Not all countries allow for unconventional marks such as sound to be protected. Those that do, however, include Australia, Canada, China, India, Japan, the UK, and the USA.

Until the implementation of the EU Trade Mark Regulation 2017/1001, only musical notations were accepted as representation of a sound mark. The EUTMR abolished the requirement for a mark to be “represented graphically” on the register and it is now possible to upload audio files and multimedia (image and sound) files as the subject matter of trade mark applications.

 In the UK and EU, sound is protectable subject matter if it meets inter alia the following requirements: 

• Capable of being presented on the register in a clear and precise manner (e.g. by providing an audio file no larger than 2MB; onomatopoeia will not be accepted);
• Capable of distinguishing the goods/ services of one undertaking from those of other undertakings;
• Distinctive (i.e. the average consumer needs to perceive the sound as denoting the commercial origin of the goods/ services);
• Non-descriptive of the goods/ services applied for, or any characteristic thereof (e.g. sound of a barking dog for foodstuff for animals in Nice Class 31 will be rejected on the basis of a link);
• Not customary in trade;
• Does not result from the nature of the goods themselves (e.g. sound of a beer/ can opening for beverages in Classes 32 and 33);
• Not necessary to obtain a technical function (e.g. repetitive high-pitched sound is intrinsic to a fire alarm);
• Does not give substantial value to the goods;
• Not contrary to public policy or principles of mortality;
• Not deceiving;
• Not applied for in bad faith.

In May 2022, Shar Products Company filed US TM Application No. 97117321 for a “motion mark incorporating sound”. It designated the EU and UK under IR No. 1693181. In November 2022, the UKIPO refused the Designation on the basis of Section 3(1)(a) of the Trade Marks Act as the “description [did] not meet the requirements of filing a sound mark” which “must be represented by submitting musical scores […] ‘Accurate musical notation’ means that the representation must include all the elements necessary for interpreting the melody” such as the pitch, tempo, and lyrics. In May 2023, the UKIPO confirmed its refusal. In December 2022, the EUIPO also refused the Designation on the basis of the mark as applied for being ineligible for registration under Article 7(1)(a) EUTMR. The mark was considered insufficiently precise since it did not include the necessary elements for interpreting melody, such as tempo, dynamics, emphasis, and time signatures.

Enforcement[5]

There have been <350 matters worldwide relating to sound marks. These include: administrative hearings (which make up 81% of matters and relate to the prosecution of trade mark applications); oppositions (10%); infringement actions (6%); invalidity or revocation actions (1%); and other (1% and covers, for example, declaratory actions). Interestingly, almost 50% of all these matters have taken place in Europe.

If only the purely contentious matters are considered – i.e. oppositions, cancellations, and infringement – there have been just 61 cases worldwide, making up 8% of all matters.

Opposition

Of these cases, 35 have been opposition actions. In the EUIPO Decision for Opposition No. B3154907, it was found that registrations for the word and figurative mark ‘LOTTO’ and sound mark ‘Danske Spil Lotto’ were not confusingly similar to an application for word mark ‘PANDALOTTO’. However, the EUIPO did note that “[v]isually and aurally, the signs coincide in the element/ component ‘LOTTO’ (and it[s] sound)”. Since a verbal analysis of marks forms part of the global analysis, it is clear that a sound mark will be analysed against word and figurative in the same way as convention marks are compared.

Infringement

Of the 22 infringement actions, 92% have taken place in the US and 8% in Europe.  

The first in Europe was Shield Mark BV v Joost Kist in the Netherlands. The second was the referral to the ECJ (as it then was) in 2003.[6] Shield Mark alleged infringement of its protected rendition of Beethoven’s Für Elise, e.g. of its 1992 Benelux Trade Mark Registration No. 781278 in Classes 35 and 41

.

This case occurred before the enactment of the EUTMR in 2017. The ECJ held that mere text such as “the first nine notes of the ‘Für Elise’ or ‘a cockcrow’ […] lacks precision and clarity and therefore does not make it possible to determine the scope of protection sought”.[7]

No further infringement cases have been brought in Europe. As mentioned, the requirement for “graphical representation” has since been removed from regulation, but the need for precision and clarity has not.

Data Comparison

That the lion’s share of contentious proceedings has taken place in the US (38% compared with 16% in Europe) perhaps reflects the US’ recognition of sound as a vital part of branding over a long period of time – or perhaps the US being more litigious – whereas sound as part of a brand feels more novel in the EU. 

Looking at the data in respect of administrative proceedings in Europe, it cannot be said that since the enactment of the 2017 EUTMR there has been a substantial or consistent increase in sound mark applications filed. The same is true of contentious proceedings (see graph below). It appears that the importance and utility of sound forming part of brands has not been further realised.

Take Aways

• Sound undeniably influences our physiology, psychology, cognition, and behaviour, and plays a part in unconscious decision making.
• Companies should be mindful of sounds integrated with their business.
• If an audio or multimedia feature was designed, is valuable to a business, and able to inform of the commercial origin, it is worth protecting – and enforcing.
• Registries follow a strict policy, governed by local legislation, in respect of subject matter of a trade mark application. It is important to indicate the correct type of mark applied for as well as a comprehensible description in the case of sound and multimedia mark applications.
• There have been few contentious cases globally in the realm of sound marks, but it is clear that in a mark versus mark comparison, sound marks undergo the same analysis and tests as conventional trade marks.
• Since 2017, it is possible to explicitly protect audio as a trade mark in the UK and EU. Businesses should be harnessing their unconventional assets and taking advantage of the system.
  

[1] The Diary of a CEO with Steven Bartlett. Episode 180: The Speaking Expert (2022)

[2] See also Treasure’s Ted Talk: The Four Ways Sound Affects Us (2009)

[3] Clarissa Pinkola Estés, Women Who Run With The Wolves, p 158

[4] North, A. C., Hargreaves, D. J., & McKendrick, J. (1999). The influence of in-store music on wine selections. Journal of Applied Psychology, 84(2), 271–276

[5] Data from Darts IP; collated in March 2024

[6] Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex (2003) ECLI:EU:C:2003:641

[7] Para [59]