Trade Marks in Sounds and Gestures: A Critical Analysis of Two Non-Traditional Signs in the EU

Abstract

This article takes a critical look at the state of the law for marks that exclusively consist in sounds (sound marks) and marks consisting in movements of part of the body (gesture marks). Sounds and gestures can both constitute 'signs', although the borderline between a protectable gesture and an unprotectable concept or property is sometimes hard to determine. Both can be represented on the register, although it is argued that authorities are too restrictive about sounds and that transparent representability of both signs is less evident than expected. The distinctiveness of all marks should be assessed in the same way. However, it is unclear how the exclusions for signs exclusively consisting in certain characteristics apply to sounds and gestures. When testing a sound's distinctiveness, verbal elements should be assessed as is the case with word marks. It is irrelevant whether sounds are unusual in the sector, whether an application concerns silent goods, or whether a sound significantly departs from norms or customs. Testing the distinctiveness of gestures boils down to determining whether the movement itself creates a lasting impression. The exact scope of non-traditional marks is the crux of their controversy. This contribution lists relevant elements for infringements and highlights how the scope of gesture marks cannot be underestimated. It pleads for prudence and restraint when judging infringements of non-traditional marks: not every use is a use 'as a trade mark'. Drawing from the broader debate, the article submits that the legislator should consider limiting the scope of protection for certain uses or signs.