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SHIELD MARK V. JOOT KIST 2004 IPRL 141

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Bench/Jurisdiction:

European Court of Justice (ECJ), now known as the Court of Justice of the European Union (CJEU)

Background:

Parties: Shield Mark BV, a Dutch company, and Kist, the opposing party. Subject: The case revolved around whether certain sounds could be registered as trademarks.

Key Issues:

Registrability of Sound Marks: The central question was whether a sound could be registered as a trademark under EU law. Specificity and Clarity: The court had to consider whether the representations of the sounds were clear and precise enough to be registered as trademarks.

Facts:

In the Shield Mark case, Shield Mark BV attempted to register several types of sound trademarks. These registrations varied in how they represented the sounds graphically. Here's a breakdown of the different types of registrations they pursued:

(A) Musical Notes on a Stave:

  1. Shield Mark BV registered trademarks that consisted of musical notes transcribed on a stave. This included the first nine notes of Ludwig van Beethoven's "Für Elise."
  2. Some of these registrations included the annotation "sound mark," and in one case, there was an additional remark "played on a piano."
  3. This form of registration, using musical notation on a stave, was deemed acceptable by the European Court of Justice as it met the criteria for clear and precise graphical representation.

PS: If you wonder what a musical stave is- A musical stave (or staff) is a set of five horizontal lines and four spaces that each represent a different musical pitch or, in the case of a percussion staff, different percussion instruments. It's a fundamental element of written music notation and serves as the framework upon which music notes and symbols are placed.

(B) Sequence of Musical Notes (Textual Description):

  1. Another form of registration consisted of a sequence of musical notes described in text, such as "E, D#, E, D#, E, B, D, C, A."
  2. Similar to the registrations involving "Für Elise," these also included the annotation "sound mark," and in one instance, the note "played on a piano" was added.
  3. However, as per the ECJ ruling, this form of textual description did not meet the necessary criteria for graphical representation.

(C )- Onomatopoeic Representation:

  1. Shield Mark BV also attempted to register a sound trademark using onomatopoeia, specifically the Dutch word "Kukelekuuuuu," representing the crow of a rooster.
  2. This registration was intended for use with computer software.
  3. The ECJ found that onomatopoeia, like textual descriptions, did not fulfill the requirements for a valid graphical representation of a sound mark.

Decision:

1. Musical Notation Acceptable: The registrations that used musical notation on a stave were considered valid as they were clear, precise, and could be easily and objectively understood. 2. Textual Descriptions and Onomatopoeia Inadequate: The registrations that relied on textual descriptions of the sound or used onomatopoeic words did not meet the standards for valid graphical representation as required by EU trademark law.

Significance:

Broadening Trademark Scope: This case was significant in broadening the scope of what could be considered a trademark in the EU, including non-conventional trademarks like sounds. Clarity in Registration: It established criteria for how non-traditional marks, such as sounds, should be represented for registration purposes. Impact on Trademark Law: This decision had a considerable impact on trademark law in the EU, influencing how national trademark offices and the European Union Intellectual Property Office (EUIPO) handle sound mark applications.