Shield Mark BV v. Joost Kist h.o.d.n. Memex

Citation: Case C-283/01; European Court Reports 2003 I-14313.

Date of Judgment: 27 November 2003

Court: European Court of Justice (Sixth Chamber)

Judges: V. Skouris, J.N. Cunha Rodrigues, J.-P. Puissochet, R. Schintgen and F. Macken.

Facts of the Case:

Shield Mark, a Dutch Company, had registered 14 trademarks as sound marks at the Benelux Trade Marks Office. These marks consisted of the musical notes of Für Elise and Cockcrow by Ludwig van Beethoven (“Beethoven”). Shield Mark had launched a radio advertising campaign, having commercials beginning with a signature tune of Für Elise. The Company also issued news sheets on bookstands and news kiosks that played Für Elise's signature tune each time a news sheet was removed from the stand. Further, Shield Mark published software for lawyers and marketing specialists containing Beethoven’s Cockcrow tune.

Mr. Joost Kist (“Mr. Kist”), a communications consultant, used a melody consisting of the first nine notes of Für Elise. He also sold a computer program that emitted the Cockcrow tune when starting up. Shield Mark, aggrieved by such use, brought an action against Mr. Kist for infringement of its trademark and unfair competition.

Issues Raised:

Whether a sound can be registered as a trademark?

Laws Involved:

Article 2 of First Directive 89/104 to approximate the laws of the Member States relating to trademarks. (European law)

Procedural History:

Shield Mark’s 14 trademark applications were granted based on the law of civil responsibility but dismissed based on trademark law by the Benelux Trademarks Office as the Governments of the Benelux precluded sound signs from being registered as trademarks. Thereupon Shield Mark appealed to the Hoge Raad der Nederlanden, the highest civil court of the Netherlands, which decided to stay proceedings and referred the case to the European Court of Justice (EUCJ). When Shield Mark filed a case against Mr. Kist, questions were raised in proceedings concerning Mr. Jist's use in his trade of signature tunes (jingles) previously registered by Shield Mark at the Benelux Trade Marks Office ( BBM) as sound marks. Accordingly, EUCJ addressed the legal issue concerning the registration of a sound as a trademark.

Analysis:

Under Article 2 of the First Directive, a trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods, or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. EUCJ interpreted this section to include sound signs that are, by nature, capable of distinguishing the goods or services of one undertaking from those of other undertakings. Accordingly, it was held that sounds may constitute a trademark, on the condition that they may also be represented graphically.

Conclusion:

This judgment by the EUCJ is a landmark decision for non-conventional trademarks. EUCJ, through this case, provided detailed guidance about filing a trademark application for the registration of sound marks. It also clarified that the sound mark must be distinctive enough to qualify for registration. This decision went a long way in trademark law, allowing brands to protect their signature tunes that create emotional associations to a specific product when the target customers hear that particular melody.