Devank Kumar Singh & Nupur Kumari

INTERNATIONAL JOURNAL FOR LEGAL RESEARCH & ANALYSIS (ISSN 2582 – 6433)

VOLUME 2 ISSUE 2 (June 2021)

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Edgar Rice Burroughs Inc v OHIM By : Devank kumar Singh & Nupur Kumari

Citation: R 708/2006-4 Facts: The applicant, Edgar Rice Burroughs, on 11th February 2004 applied for a community trademark for certain goods and services under class 9, 16, 25, 28, 38, 41& 42. The application was for a “sound mark” and as a graphical representation contained a sonogram (Image 1) and the text ‘The mark consists of the yell of the fictional character TARZAN, the yell consisting of five distinct phases, namely sustain, followed by ululation, followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by the representations set out below, the upper representation being a plot, over the time of the yell, of the normalized envelope of the air pressure waveform and the lower representation being a normalized spectrogram of the yell consisting of a three-dimensional depiction of the frequency content (colors as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis).’ (see para 2 of the Judgement)

Image 1 On this ground that the sonogram was not an acceptable graphical representation of the sound mark, the examiner refused to accord a filing date to the application followed by the closure of the file. The applicant filed an appeal before the Board of Appeal, OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADEMARKS AND DESIGNS) (hereinafter referred to as “OHIM”).

Procedural History: ● 13 September 2004, the examiner notified the applicant that the application does not contain a representation of trademark, and therefore, a filing date cannot be accorded. The applicant was given 2 months to remedy this deficiency following Rule 9 (1) of the Implementing Regulation (CTMIR). ● 24 September 2004, the applicant submitted its reply stating that the argument by the examiner was not understandable as the applicant did submit a color representation of the mark.

● 16 January 2006, the applicant filed further observation post which, on 29 March 2006 the examiner gave the notice of closure of file according to Rule 9(2) CTMIR with the reason that the abovementioned deficiencies were not remedied. ● 23 May 2006, the applicant filed a notice of appeal against the notice of examiner followed by a statement of grounds on 7 July 2006.

Issues: ● Does the representation as filed constitute a representation of the mark that fulfils the statutory requirements under the CTMR and CTMIR? (See para 14) ● If not, does this constitute not only an absolute ground for refusal under Article 7 (1) (a) CTMR in conjunction with Article 4 CTMR, but also a ground for the non- attribution of a filing date under Articles 26 and 27 CTMR and Rule 9 (1) CTMIR? (See para 14)

Analysis: ● ISSUE 1 The applicant submitted the following arguments in support of his claim for the attribution of the filing date for his sound mark. (i) The applicant referred to OHIM’s decision in ‘Metro-Goldwyn-Mayer Lion Corporation’1 where it was held that sonograms are an acceptable graphic representation, and the applicant’s application fulfilled all the requirements of the decision. (ii) The mark i.e. yelling sound of a fictional character Tarzan is clear, well known in Europe, precise, and would be easily accessible to people with a musical background. (iii) The mark is recognizable and is associable with the applicant. It is even being licensed to other enterprises such as Nokia (ring tone) and Disney (motion pictures). (iv) The graphic representation is similar to a musical notation, as people who are unable to read it will need the assistance of an expert, the same in the case of a spectrogram. An excerpt from Wikipedia supporting this argument was also provided.

The Court while admitting the appeal provided that although the examiner’s notice constitutes a decision under Article 57 of Community Trade Mark Regulation (“CTMR”), it does not mean that there is a loss of rights without a decision2 on the applicant’s part. To clarify as to what are the qualifications for a sound mark to be registered as a trademark, the OHIM Board of Appeal heavily relied on two cases.

1 Metro-Goldwyn-Mayer Lion Corporation, Case No R 781/1999-4, 25 August 2003 2 Rule 54(1), Community Trade Mark Implementing Regulation (“CTMIR”) “If the Office finds that the loss of any rights results from the Regulation or these Rules without any decision having been taken, it shall communicate this to the person concerned in accordance with Article 77 (now Article 79) of the Regulation, and shall draw his attention to the substance of paragraph 2 of this Rule.”

The Board referred to the ECJ judgment in ‘Sieckmann’3 case where it was explained that why a sound mark is required to be accompanied with a graphic representation. According to ECJ such requirement serves a dual purpose i.e. (i) defining the precise subject-matter of protection, and (ii) by way of entering the graphic representation in the register, such a trademark is made accessible to competent authorities and the public (competitor third parties). In addition to this, there is “Shield Mark”4 Judgement where Article 2 of the Directive5 (not in force anymore) was interpreted to “consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”6 Furthermore, the Court tried to connect these dots with the present case, wherein the qualifications interpreted by ECJ in the Shield Mark case i.e. clear, precise, self-contained, easily accessible, intelligible, durable, and objective were discussed with respect to the “Tarzan yell” and its graphic representation. (i) The applicant wishes that the verbal circumscription of the mark as a “yell of the fictional character Tarzan” etc. to be considered as a graphic representation7 rather than a description8 of the mark. However, considering the Shield Mark Judgement, such representation of a sound is not a ‘clear’ and ‘self-contained’ representation of the sound itself (see para 18). (ii) The graphic representation ‘spectrogram’ is also not ‘clear’ or ‘intelligible’ as the applicant failed to show that how people will associate or discern the sound from such representation. Even a specialist in spectrograms cannot reproduce the sound given only the spectrogram (see para 21 & 22). (iii) The representation is also not easily ‘accessible’. The Community Trade Mark (“CTM”) Register is created for the third parties who want to know that whether or not the signs they want to use as a trademark for their goods and services, are capable of being protected as a registered mark. To accomplish this, the third parties should be able to ascertain the subject matter of a registered mark in the first place. And, in this case, a competitor should be able to transform the image into sound (either in his brain or reproducing it through technical means). However, given the nature of the image, the Board does not see any technical means by which such an image can be retransmitted or re-converted into a sound. This requirement of being easily ‘accessible’ is supposed to be checked from the standpoint of the reader of the CTM Bulletin and not from the standpoint of the creator of the image (see para 23).

3 Ralf Sieckmann v Deutsches Patent- und Markenamt, Case C-273/00, European Court Reports 2002 I-11737, 12 December 2002. 4 Shield Mark BV v. Kist, Case C-283/01, The European Court of Justice, 27 November 2003. 5 Article 2, FIRST COUNCIL DIRECTIVE of 21 December 1988, “Signs of which a trade mark may consist A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.” 6 Ibid. 7 Rule 3(2), CTMIR 8 Rule 3 (3), 2nd sentence, CTMIR

(iv) As for the excerpt from “Wikipedia” provided by the applicant and in the ambit of Article 74 (1) CTMR, nothing in that definition specifies how to read a spectrogram or the fact that an image of a spectrogram can make the reader understand what kind of sound it is. The ‘Wikipedia’ article under the heading ‘Creating sound from a spectrogram’ points out that the spectrogram can be transformed into a sound, however, it does not clarify if the sound will exactly be the same as the initial one (see para 27 & 28).

● ISSUE

Article 4 of CTMR, defines the type of signs a Community trade mark accepts. In the present case the issue is not vis-a-vis what kind of sounds come under trademark but the application registration that fulfils the criteria of Article 36(1)(b) of CTMR. “The applicant expressly seeks registration of a sound mark and the Board only considers the ‘representation of the mark’ as filed.”9

While examining the grounds of absolute refusal (Article 7 of the CTMR) under Article 37 of CTMR, it can be concluded that, a spectrogram is ineligible for registration, however, such refusal is not acceptable without giving an opportunity to the applicant to have withdrawn or amended the application. Even if the exception of article 7(3)10 CTMR is applied, then also the verbal reference of the Tarzan yell would not qualify as unambiguous and a clear representation.

The inadequacy of the graphical representation does not extend only to Article 4 and 7(1)(a) of CTMR, but also to the requirement of filing dates under Rule 9(1) CTMIR in conjunction with Article 26 of CTMR.

Article 27 states that the date of filing needs to fulfil all the conditions of Article 26(1) which includes the representation of a trademark. However, such formality requirements if kept aside, it has to still fulfil the conditions of being clear, precise, self contained, easily accessible, etc. ‘Representation of a mark’ would still comprise of being clear or intelligible, and a pretentious representation of a sound does not amount to both, hence does not fulfil the criteria of CTM application.

While taking into account the applicant’s argument that the colour representation of the mark provided by them should be clear and precise enough. The Board compared this situation to a case11 with similar facts, in that case the court agreed on registering the mark in the first instance, however, it was later rejected as the applicant wanted the protection of the mark in many other

9 Edgar Rice Burroughs, Inc. , (R 708/2006-4), DECISION of the Fourth Board of Appeal of 27 September 2007, (See para 16) 10 Ibid, para 43- “paragraph 1(b), (c) and (d) of Section 7 shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.” 11 Ibid, para 47- “(cf. ECJ, Judgment of 24 June 2004 in Case C-49/02 ‘Heidelberger’, and Board of Appeal, Decision No R 1004/2006-2 of 13 December 2006, ‘Purple/white’)”

7 forms and combinations. Therefore, the Board concluded on this point that there is no precedent for such a mark being registered. Hence, the examiner seems reasonable for non-attribution of filing date.

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Conclusion: Logos and word marks have always had a way but one must not forget that all kinds of things can be protected as a subject-matter of trademark. The Shield Mark Case has helped us obtain answers to determine whether sound(musical notations) could be registered as a trademark. In reference to a spectrogram, OHIM ruled that it was not amounting to be self contained as it couldn't deduce the sound in the same way as a musical notation. Furthermore, one doesn't understand as to how the Board justifies the refusal ground that the Tarzan yell is not widely recognised and could not be associated with the applicant, where in the previous judgment they have allowed the registration of Für Elise as a trademark. Also taking into account that the Tarzan yell is quite renowned being associated with Burroughs’s comic hero, especially, when it is capable and has the potential to be commercially lucrative when licensed, the Board’s understanding seems misdirected. The definition of trademark comprising of a sound Mark does differ from the viewpoint of EU and US.12 However one can see that in USA, there have been registered soundmarks such as creeking door for a radio programme or chimes of NBC network, and even for the ‘Tarzan Yell’ the first registration of Trademark in US was in 1998. An important aspect to be noted is to see how European courts would interpret the US arguments/cases. However, one could observe a drastic change in the way of thinking and Outlook vis-a-vis registrations of sound marks. Also, it would be interesting to see how Pitbull’s signature yell would have an impact in the future and would it only be used in music recordings or something that we cannot foresee as of now. Either way, such decisions will carve a new path for sound marks and not only in commercial aspects but in musical too, thereby increasing registrations of sound marks. One thing to be noted is that in Australia, a musical way has been found out to represent the Tarzan yell. Also, the comic character of Edgar Rice Burrough was granted a sound mark in 2012 in Australia itself. There has been some relief for those who wants to register a sound mark under CTMR & CTMIR, in the form of 2005 amendment. According to this amendment the new Rule 3(6) CTMIR allows for an electronic submission for a CTM application together with a graphical representation. However, we have yet to see that how this progressive change is going to help Edgar Rice Burrough in getting his much awaited registration.

12 According to the Trademark Manual of Examining Procedure, “A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they ‘assume a definitive shape or arrangement ’and ‘create in the hearer’s mind an association of the sound ’with a good or service.”- (TMEP § 1202.15 (citing In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978)).