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Are your sound marks making a big noise?

28 February 2023

Are your sound marks making a big noise?

Sound plays a pivotal role in purchasing decisions for younger consumers. Patsy Lau and Char Lam explain how to best protect – and exploit – your sound marks, no matter where you are in Asia.

In today’s crowded market, it’s a constant battle for businesses to capture consumers’ attention. According to Forbes, Millennials represent the largest group of consumers but the spending power of Gen Zs is also increasing, and the rise of social media and multi-media marketing means that consumers expect a richer and more engaging purchasing experience. With recent studies showing that the use of sound plays a pivotal role in purchasing decisions for younger consumers, a brand’s sonic identity has become more important than ever. Businesses across all industries have been creating more innovative sound content to connect these powerful consumer groups with their brand identity and culture. This article will look at the legal implications and mechanisms for protecting sound marks in the Asian region.

What are sound marks?

Sound marks are usually legally defined as “a sound which is capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

Sound marks are not strangers to the marketplace. Some iconic sound marks are instantaneously recognizable: the musical introduction of 20th Century Fox for motion pictures; the “Da-Dum” sound of Netflix; and the click sound of Nintendo Switch. These highly successful sound marks serve as a badge of trade origin, allowing consumers to immediately identify the source of the goods and services.

Why is it important to protect sound marks?

Securing registrations for sound marks is the first step to ensuring that the considerable investment in developing the brand will be protected. Particularly in Asia, where most jurisdictions operate under a first-to-file system, early registration will deprive squatters of opportunities. Further, valid registrations grant businesses the right to prohibit competitors from using identical, or confusingly similar sound marks, to identify their goods and services. This reduces the risk of diluting the distinctiveness of a sound mark in the market.

When and where to file applications to register sound marks?

The short answer is: as soon as possible, and wherever you do business or intend to do business. Applications should be filed promptly as the examination of sound mark applications are often more complex than traditional trademarks; the individual Registries may require applicants to accurately and clearly describe the sound and may have its own requirements for representation of a sound trademark, including providing a graphical representation. Music may be relatively simple, but more unusual sounds, such as Darth Vadar’s breathing, may be more of a challenge to accurately describe and represent in writing.

In some jurisdictions, the applicant may be required to adduce evidence of use showing acquired distinctiveness before registration will be granted. [See table below.] It is also worth noting that in some jurisdictions such as Cambodia and the Philippines, sound marks are only protectable by copyrights, and not as trademarks.

What and how to register?

Sound marks are subject to the same inherent distinctiveness threshold as traditional trademarks. Sound marks containing certain distinctive linguistic elements (as opposed to being purely musical), and sound marks which are relatively short in duration, are likely to be examined more quickly and meet fewer objections. A full assessment of the registrability threshold of relevant jurisdictions should be conducted so that a holistic approach may be adopted across the region. This would save on both time and legal fees.

Monitoring sound marks

Watch monitoring services for sound should soon become available for brand owners in the foreseeable future as the required technology to recognize sounds being played already exists in the marketplace. For instance, since October 2020, Google’s music recognition algorithm can match songs with people humming or whistling of the melody and its variations. When such watch service becomes available, brand owners can opt for such services so to be notified of any potential conflicting marks, and to decide whether and the type of actions to take. This would be a useful tool for brand owners to combat any unauthorized third-party applications for similar sound marks.

Statutory thresholds for protecting sound marks and procedural requirements

Below is a summary of the different legal requirements for filing applications for sound mark registrations across some Asian jurisdictions. As shown, sound marks are protectable by way of non-traditional trade marks in many of these jurisdictions (except in the Philippines and Cambodia where sound marks can only be protected by way of copyright).  

 

 

People’s Republic of China

Required Information/ Documents

Remarks

  • Specification of the nature of the mark as a sound mark
  • Audio file of the sound mark
  • Description of the sound mark
  • Musical notation of the sound mark
  • Explanation of the intended use of the sound mark
  • Successful applications generally require long-standing and extensive use
  • The audio file to be submitted with should not exceed 5MB and be in the format of .wav or .mp3

 

Hong Kong SAR

Required Information/ Documents

Remarks

  • Graphical representation of the sound mark (usually by musical notation)
  • Description of the sound mark
  • Audio file of the sound mark (optional)
  • Long sound pieces are likely to be objected for not being recognized as a trademark.
  • Sound marks consisting of linguistic elements or a form of sound (e.g. roar of a lion) generally have a higher chance of success in being granted registration.
  • Sounds marks solely consisting of musical notes will likely require evidence of use.

 

Macau SAR

Required Information/ Documents

Remarks

  • Description of the sound mark
  • No restriction in terms of file size or length.

 

Taiwan

Required Information/ Documents

Remarks

  • Audio file of the sound mark in .wav format
  • Musical notation of the sound mark
  • Description of the sound mark
  • Evidence of use is advisable to support an application for sound mark.
  • May seek protection by way of copyright as an alternative, which does not require registration, if the trademark application is unsuccessful.
  • Upon successful registration of the sound mark, the registrant can bring infringement actions based on the same (this is generally more straight forward than solely relying on copyright).

 

Indonesia

Required Information/ Documents

Remarks

  • Audio file of the sound mark in MP3 format; maximum 2 MB
  • Musical notation of the sound mark
  • The length of the sound mark should not exceed 30 seconds.

 

Japan

Required Information/ Documents

Remarks

  • Musical notation or description of the sound mark
  • Audio file of the sound mark in MP3 format
  • Sound marks which consist of linguistic elements or a form of sound (e.g. roar of a lion) generally have a higher chance of success.

 

Malaysia

Required Information/ Documents

Remarks

  • Musical notation of the sound mark
  • Title or Full Name of the sound mark
  • Audio file of the sound mark in MP3 format
  • Description of the sound mark
  • Sound marks which consist of linguistic elements or a form of sound (e.g. roar of a lion) generally have a higher chance of success in being granted registration.

 

Singapore

Required Information/ Documents

Remarks

  • Description of the sound mark
  • Graphical representation of the sound mark (usually by musical notation)
  • Precedent registrations show that registrable sound marks tend to be short in duration.

 

South Korea

Required Information/ Documents

Remarks

  • Description of the sound mark (including  the characteristics, duration, and how the sound is performed or made)
  • Audio file of the sound in MP3, WAV, or WMA format; maximum 3MB
  • Score of the sound mark (upon request by the Korean Intellectual Property Office)
  • Sound marks which consist solely of sounds or music elements (without any linguistic element) will likely require evidence of use to show acquired distinctiveness.

 

Thailand

Required Information/ Documents

Remarks

  • Description of the sound mark
  • Audio file in MP3 format
  • Indicate the type of sound mark (whether it is a human sound, animal sound, music or melodic sound)
  • Context in which the mark will be used
  • Thai syllabic expression of the melody 
  • The length / size of the sound mark should not exceed 30 seconds or 5MB.

 

Vietnam

Required Information/ Documents

Remarks

  • Audio files in MP3 format and be stored/ recorded in separate CDs, DVDs or USB; maximum 2MB
  • Musical notation of the sound mark
  • Description of the sound mark
  • Copyright-related ground of refusal: consent from the copyright holders must be obtained if the sound marks comprise copies [in whole or part] of copyrighted works.

 

 

Conclusion

As businesses increasingly embrace audio branding, the protection of these meticulously-crafted sounds, is a critical part of any trademark strategy. Brand owners are encouraged to consult with their legal counsel to formulate strategies to secure the best protection for their sound marks without delay.

 


About the author

 Patsy Lau

Patsy Lau

Patsy Lau is a partner in the Hong Kong and International Trade Marks Practice at Deacons in Hong Kong. Lau, who is qualified in Hong Kong and California, specializes in the protection of large multinational and regional trade mark portfolios. She has extensive experience in conducting trademark audits and in advising on portfolio structure and brand management and filing strategy. Lau’s practice also concentrates on complex trademark disputes and negotiations, opposition, invalidation and rectification matters including trademark appeals before the High Court. She also advises on all forms of commercial transactions affecting trade marks from simple assignments to complex multinational licensing arrangements and conducting due diligence.

 Char Lam

Char Lam

Char Lam is a senior associate in the Hong Kong and International Trade Marks Practice at Deacons in Hong Kong. Lam specializes in the protection of global and regional trademark portfolios and advising on strategic trademark protection. She has experience in brand management, enforcement, company name disputes, and IP audits for mergers and acquisitions. Her practice also focuses on various types of trademark disputes and negotiations, including oppositions, revocations, and invalidations.

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