“There is more to that tune stuck in your head.”

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25 June 2015

A device, a name, a signature, a word, a letter, a numeral, a shape, a configuration, a pattern, an ornament, a colour, a container for goods or any combination of the aforementioned, are all trade marks , capable of being represented graphically, used or proposed to be used in relation to one trader’s goods or services for the purpose of distinguishing them from similar goods or services of another.

When we think of trade mark, we tend to only think of words and logos. What if we started thinking outside the box and beyond what one can see? What about what we hear or even smell on a daily basis? Have you ever thought of that? Have you ever thought of that tune stuck in your head and whether there was more to it than just a tune?

Most people find it easier to remember a melody, jingle or even song as opposed to words that are sometimes complicated to pronounce or misspelled or in another language solely to make it sound romantic and different.

Trade marks are important in our society not only for consumers but also trade mark owners. They enable us not only to identify a product/service from another but also to protect us from being misled into buying the wrong product and finally they protect trade mark owners against injury to their reputation, against dilution and any form of unlawful infringements.

In terms of our law, a mark needs to be capable of being represented graphically as well as capable of distinguishing the goods/services of one trader from those of another.

Which leads to the following question; what about smells, colours, sounds and other type of trade marks? Are they capable of being validly registered in our country since sounds cannot be visually reproduced?

Countries such as the US, Hong Kong, Singapore, Taiwan, India, France, New Zealand, Australia and even Canada have amended their trade mark law and are now accepting application for the registration of sound trade marks. The Federal Court of Canada’s approval of the MGM sound trade mark consisting of a lion’s roar, filed almost 20 years ago shows the importance of non traditional trade marks and more particularly sound trade marks.

In the US for example, a sound mark needs to be described clearly in order to be understood by the average everyday person and accompanied by an audio or video reproduction. The description should clearly define all the details which constitute the trade mark. The US trade mark register is filed up with such type of description: “ The trade mark is a sound mark which comprises the sound of three steps taken by a horse on a pavement, followed by the sound of a cow mooing ( clop,clop,clop, Moo Moo) as rendered in the CD accompanied this application”.

In the United Kingdom on the other hand, the sound mark needs to be graphically represented in the form of musical notes to ensure that the mark is clear and precise.

What if South African law was outdated? With the evolution of technology, our trade mark laws and trade mark offices need to also evolve in order to meet people’s need as to enable people to file their sound trade mark on line and accompany it with a digital file of the sound. Graphic representation could also be achieved by using adapted computer programs that could be able to read and reproduce sonograms, spectrogram etc…

People are now more and more moving away from traditional trade marks and relying on non traditional trade marks such as sounds, scents, holograms, motion marks which appeals differently to our five senses.

Everybody wants their products to stand out from their competitors. Companies spend billions on marketing their trade mark so that they acquire a reputation and goodwill so that the consumer remembers their product. If one wants to have a viable brand, one needs to think of a trade mark that will have an impact on consumers and will be everlasting. This can easily be achievable by using a trade mark that incorporates the five senses. Due to technologies and globalization, those companies strive to create the best brand and for that, they spend time and money in creating non conventional/ traditional marks.

Auditory memory is one of the strongest human memory based on the fact that it enables a person to recall pictures, specific events or moments and even emotions.  When a person hears the Nokia ringtone, they don’t have to see the phone but they know it’s a Nokia phone. There is more to a sound, a jingle or music, these are powerful tools that can be used as trade marks and influence consumer’s decision making.

Our legal system needs to meets today’s needs, and for that, it needs to be in pace with technological advances.  According to section 2(2) of the trade mark Act;

“References in this Act to the use of a mark shall be construed as references to-

(a)  The use of a visual representation of the mark;

(b)  In the use of a container, the use of such container; and

(c)  In the case of a mark which is capable of being audibly reproduced, the use of an audible reproduction of the mark.”

Although section 2(2) does not clearly exclude a sound as a trade mark, it should be amended to expressly include it as part of the definition of a mark and therefore, a trade mark.