“Ta-dum” followed by a bold red letter N. Without hesitation, Netflix immediately comes to mind.
More than just vibrations in the air or random notes strung together, sounds are powerful tools that can be used to carry meaning and trigger memories. Some sounds are so unique that they become directly associated with a brand or product. In fact, certain sounds are so distinctive that they can serve as trademarks or unique source identifiers for the goods or services of an enterprise.
In 2017, Netflix, Inc. was issued a registration for its opening sound by the United States Patent and Trademark Office (USPTO) covering streaming services (Nice International Class 38) and entertainment services (Class 41). Its Certificate of Registration identifies it as a sensory mark, and contains the following description: “The mark consists of a sound mark comprising a musical composition featuring two sixteenth note timpani strikes on D2 and D3, simultaneously with which are played three dotted half notes on D2, D4 and D5.”
This is not the first time a sound was granted trademark protection. One can easily recognize the electric hum of a Star Wars lightsaber, the resonant chime of a MacBook booting up, and the booming lion’s roar before every MGM movie. There are countless examples—the Looney Tunes theme song, Yahoo’s yodel, the Pinkfong intro.
Like any other trademark, a sound mark must meet the requirement of distinctiveness in order to be registrable. The EU Trademark Regulations provide that sound marks must be “capable of distinguishing the goods or services of one undertaking from those of other undertakings.” The USPTO further provides that, for a sound mark to function as a source indicator, it must “assume a definite shape or arrangement” and “create in the hearer’s mind an association of the sound” with a good or service.
In order to be distinctive, the sound must not be functional. The General Court of the European Union has had the opportunity to rule on the registrability of a sound of a can opening, followed by silence and a fizzing sound. The sound was denied registration as it was not distinctive, but a purely technical and functional element of all drinks. In other words, it was not resonant enough to distinguish it from comparable sounds in the field of drinks.
Sound marks are currently recognized and protected in a few jurisdictions, including the USA, India, Australia, China, UK, Canada and Japan.
Earlier this year, in an effort to institutionalize the protection of non-conventional marks, the Intellectual Property Office of the Philippines (“IPOPHL”) issued Memorandum Circular No. 2023-001 or the “Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2023” (“Amended Rules”). This amended the Revised Trademark Regulations of 2017.
Under the Amended Rules, the IPOPHL provided guidelines on the protection of non-conventional marks like color marks, position marks, motion marks and hologram marks.
Despite the acceptance by the Philippines of more non-conventional marks, trademark protection is limited only to visual marks. This limitation stems from the IP Code (Republic Act No. 8293) which defines a “mark” as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise…”
Notably, there are other marks that are not visually perceptible but are capable of becoming unique identifiers of products and services of certain businesses. These include sound marks, taste marks, texture or feel marks and olfactory marks.
For the Philippines to afford protection to these non-visual marks, the enactment of a legislation amending the IP Code is required.
There are at least 3 bills filed with the House of Representatives proposing to further amend the IP Code. These bills uniformly define a “mark” as “any sign or combination of signs”, without any qualification as to whether the sign is visible or not. As of today, the bills are pending before the House Committee on Trade and Industry.
In the meantime, while the law allowing the protection of sound marks and other non-visual marks are not “hear” yet, it cannot be denied that audio or sonic branding has become more common among businesses. A number of iconic sounds like SM’s “We got it all for you”, TV Patrol’s intro score, the sonic brand of Ortigas malls, and LBC’s “Hari ng padala” function as unique identifiers of their respective goods and services. A law allowing the protection of sound marks would be helpful for business owners should there be attempts by opportunistic individuals to utilize the same sounds on their own goods and services.
This article is for informational and educational purposes only. It is not offered and does not constitute legal advice or legal opinion.
Clarisse Paulina M. Valdecantos is an associate of the Intellectual Property Department of the Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW).