Supreme Court sings the praises of sound marks

A list of signs distinctive of Switzerland would most likely refer to chocolate, watches, cheese, financial services and yodelling. Therefore, it seems reasonable that Swiss trademark jurisprudence should easily accept sound marks as trademarks. Initially, this was the case. Under the trademark legislation which came into force in 1992, the Swiss Intellectual Property Office registered sound marks, such as the hymn of the International Olympic Committee and jingles. However, in July 2005 the Swiss Intellectual Property Office radically changed its practice to rule that sound marks were no longer registrable. It justified this approach with the argument that the public is not generally used to recognising sounds as trademarks. This approach has been challenged in several trademark registration procedures, one of which has led to the Supreme Court clarifying the issue (BGE 135 III 359f.).

The case involved a sound mark belonging to German company August Storck KG for, among other things, chocolate and chocolate products (International Trademark 858 788). The mark looks like this: 



The Swiss Intellectual Property Office refused registration of this sound mark. On appeal, the Federal Administrative Court held that, contrary to the practice established in July 2005, sound marks as such are registrable, but in the case at hand the Storck sound mark was not sufficiently distinctive.

On appeal, the Supreme Court reversed this decision and reopened the door to sound mark registrations. The court confirmed that non-visible sound marks are basically trademarks. It reaffirmed the former practice of the Swiss Intellectual Property Office whereby sounds are not per se incapable of distinguishing goods and services. According to the Supreme Court, the fact that music is often used in commercials does not prevent short melodies from having a distinctive character. The court even found that sounds are increasingly used to distinguish products and services and, therefore, the public is able to distinguish the use of a sound as a signal (and thus a trademark) from the use of a sounds as an accompanying melody. With regard to the distinctive character of the Storck sound mark, the court held that melodies which can be easily remembered and which have been newly composed can be qualified as distinctive. 

Although it reopened the way to the registration of sound marks, the court also set down some limits. It held that melodies with a well-known text and melodies which could describe the specific products or services covered by the sound mark were still incapable of registration. As an example, the court mentioned that Christmas songs would not be registrable for Christmas decorations or ornaments. The trademark world can certainly live with that. 

No proof was provided as to whether the public is capable of recognising sounds as trademarks, as the Supreme Court believes, or not, as the Swiss Intellectual Property Office believes. This question was treated as a question of law and not of facts.