Navigating the Sonic Maze: overcoming the challenges with registering sound marks in the UK

In an increasingly crowded market, businesses are recognising the value of sound marks (or ‘sonic logos’) in order to distinguish their brands from those of their competitors. However, registering a sound mark in the United Kingdom has proven to be an arduous process, posing significant challenges for companies looking to secure legal protection for their distinctive audio identities.

Unlike traditional trade marks, which primarily focus on brand names and logos, sound marks aim to protect distinctive and recognisable auditory elements associated with a particular brand or product. This can include jingles, musical compositions, or even unique sound effects that have become synonymous with a company's identity.

There are, however, notable challenges that must be overcome in order to register a sound mark at the UK Intellectual Property Office (the ‘UK IPO’). One such major obstacle is the requirement that sound marks must be distinctive and capable of distinguishing the goods or services of one enterprise from those of others in order to fulfil the ‘essential function’ of a trade mark. More often than not, this requires an applicant for registration to demonstrate – through evidence – that the sonic logo in question has a high level of uniqueness, making it difficult for businesses to prove that their sounds are not merely functional or generic, especially if they are newly created.

The lack of established precedents and dearth of case law on sound marks, particularly in the UK, further adds to the uncertainty that surrounds the standards and requirements for the registration of sonic logos, leaving businesses in an uncertain position when attempting to safeguard their auditory brand assets.

However, a recent case that we handled for our client Sandvik AB (‘Sandvik’) now offers some new optimism for would-be sound mark applicants, after we were able to secure registration for a new sound mark based on inherent distinctiveness.

The Evolution of the Brand Identity of Sandvik

Sandvik is a Swedish high-tech engineering group that specialises in products and services for mining, rock excavation, rock processing and metal cutting based on innovation, digitalization and sustainable engineering. The company, founded in Gävleborg County, Sweden, back in 1862, had approximately 41,000 employees in 2023 and a revenue of 127 billion SEK, with sales in around 150 countries.

The Sandvik brand name is well-established and possess an enviable reputation. Nevertheless, the company has evolved substantially in recent times, with a new strategy being implemented, its purpose being defined (“We make the shift - Advancing the world through engineering”), and part of its heritage business being divested. In addition, Sandvik has supported its growth ambitions through over 30 new corporate acquisitions in 3 years, the development of new technologies, skillsets and competencies, all while modernising and becoming more digitally-driven with its services and offerings. A new brand identity and corporate positioning was therefore developed and launched in September 2023 in order to reflect the new and future Sandvik.

The launch of the new Sandvik brand identity was well-received in the market and sparked a good amount of media attention, especially from within the company’s main industries and sectors such as on AggNet.

A fundamental part of the company’s revised brand identity is the new sonic logo, created by Sonic Director Tomas Nordmark, which can be heard here. We were engaged by Charlotte Falck, Head of Trademarks and Brand Protection at Sandvik, back in September 2022 to advise on the protectability of the sonic logo (or logos, as there are actually two variants) in the UK, long before the rebrand was launched to the world.

New sonic logo

A Pessimistic Initial Position

We were initially quite doubtful about the chances of successfully obtaining a registration for the new sonic logo in the UK. A non-distinctiveness objection under Section 3(1)(b) of the Trade Marks Act 1994 (the ‘Act’) was considered highly likely to be raised during examination, a refusal that we would not be able to get past by relying upon evidence of acquired distinctiveness (or ‘secondary meaning’), given that there would be no existing marketplace use of the new brand asset. This is regardless of the fact that “the criteria for assessing distinctive character of all types of marks are the same”, according to the well-established Court of Justice of the European Union case law from OHIM v Erpo Möbelwerk (Case C-64/02, 21 October 2004).

Despite changes to the EU Trade Marks Directive that came into effect in 2017, which eliminated the requirement for marks to be graphically represented, UK sound mark applications are still very rare in practice, no doubt partly because of the difficulties associated with obtaining protection. Only around 250 sound marks appear to be registered in the UK in total (according to a search of the TMview database), with a handful of additional pending applications currently going through the registration process.

However, of these 250 sound mark registrations, just over 200 are ‘comparable’ or ‘clone’ registrations that were automatically created on the UK Register from identical EUTM registrations on 1 January 2021, as a consequence of Brexit. None of these registrations will therefore have been substantively examined by the UK IPO.

Only around 10 of the 40-or-so remaining ‘true’ UK registrations post-date Brexit and so give any indication of current practices and standards at the Office. Of these, four feature a distinctive spoken verbal element within the sound mark which would have presumably carried them through distinctiveness examination, whilst two are for very different types of sounds that offer no guidance or assistance to the question of the inherent registrability of the Sandvik sonic logo.

The final six registrations are generally comparable sounds to the Sandvik sonic mark, but the timelines from filing to grant suggest that acquired distinctiveness was relied upon to secure registration, with there typically being a gap of around a year or so between filing to registration dates. All of these factors combined to make it particularly difficult to research and learn from precedent cases in the UK.

The UK IPO’s usually-very-helpful Manual of Trade Marks Practice also cast significant doubt on the ability to register a sound mark without evidence of use, commenting that: “There is no question that sound marks can function as trade marks to designate origin…[but] the origin of goods or services is not generally designated by reference to sound only…even if the consumer may be unfamiliar with a piece of music or sound, like other unconventional marks, the assumption that it functions also as a trade mark is unlikely to be the case, absent education”.

Greater Encouragement from the EUIPO

The position regarding the inherent registrability of sound marks at the European Union Intellectual Property Office (the ‘EUIPO’) offered more positivity though. A number of very recent example registrations for broadly equivalent sound marks were identified, all of which proceeded from filing to acceptance/publication in around 1-2 months, with the examination reports confirming that they did not encounter any distinctiveness objections on examination, nor was any evidence of acquired distinctiveness filed.

The EUIPO’s Trade Mark Guidelines offered more insight into the inherent registrability of sonic logos, including the following comments (with emphasis added):

• The acceptability of a sound mark must, like words or other types of trade marks, depend on whether the sound is distinctive per se… whether the average consumer will perceive the sound as a memorable one that serves to indicate that the goods or services are exclusively associated with one undertaking.
• A sound must have ‘a certain resonance’…enabling the target consumer to perceive and consider it a mark.
• However, marketing habits in an economic sector are not fixed and can evolve in a very dynamic way, including as regards the use of sound marks.
• The kinds of sound marks that are unlikely to be accepted without evidence of factual distinctiveness include:
  • Very simple pieces of music consisting of only one or two notes (see examples below).
  • Sounds that are in the common domain (e.g. La Marseillaise, Für Elise).
  • Sounds that are too long to be considered as an indication of origin.
  • Sounds typically linked to specific goods and services.

The EUIPO’s Guidelines also go on to provide some helpful examples of acceptable sound marks.

Furthermore, some informative and seemingly quite pertinent case law from the General Court was found that gave substantially more depth into the factors that must be considered during examination:

• Firstly, Globo Comunicação e Participações S/A v EUIPO (Case T-408/15, 7 October 2016) introduced a framework for considering the issue of inherent distinctiveness in the context of sound marks, with there being two main criteria for consideration: consumer habits and trade practice, and the characteristics of the mark itself; and
• Secondly, Ardagh Metal Beverage Holdings GmbH & Co. KG v EUIPO (Case T-668/19, 7 July 2021) provided a series of considerations regarding the criteria for assessing the distinctiveness of sound marks and the general perception of this type of mark among consumers.

Buoyed by the apparently more optimistic position in the European Union and motivated by the importance of the sonic logo to the new brand identity of Sandvik, we were instructed to proceed with applying for the sound mark at the UK IPO. UK Trade Mark Application No. UK00003893778 was filed on 27 March 2023 in 18 classes of goods and services.

Filing the First Ever Series Sound Mark Application at the UK IPO?

In order to take advantage of the ‘series’ mark provisions under Section 41(2) of the Act, we decided to file a series of two versions of the Sandvik sound mark: one for its main sonic logo, the other for a stripped-back version, having advised that this should be acceptable since there is no limitation on the kinds of marks that could constitute a series according to the Act.

Main sonic logo

Sonic logo (stripped-back)

However, actually submitting the application for a series of two sound marks at the UK IPO proved to be challenging, because the Office’s online filing system would not permit an applicant to upload more than one kind of non-traditional mark. We therefore sought guidance from the Office who advised us to file online with one version of the sound mark and then send a follow-up email the same day to trademark.examination@ipo.gov.uk that enclosed the second version of the sound mark, together with an explanation of the situation. This led us to believe that the Sandvik sound mark application may have been the first time that anyone has ever filed a non-traditional series mark in the UK.

Overcoming Examination Obstacles

Unfortunately our pre-filing pessimism was soon realised when the UK IPO’s examination report issued. Along with some minor classification objections that were easily resolved, the Office raised both the anticipated non-distinctiveness refusal and an unexpected series mark objection.

With regards to the latter objection, the Office alleged that the two versions of the sound mark were not acceptable as a series because the “marks contain significant differences because the first sound mark consists of a different sound variation compared to the second mark. The aural and conceptual difference between the two marks renders them unable to function as a series on one application”.

We successfully responded to this aspect of the examination report through a number of arguments:

• Both versions of the mark are comprised of the same melody, with the same notes in precisely the same order, with the same tempo and the same pause or rest before the fourth note;
• The different instruments or sound effects that feature between the two versions of the mark are irrelevant and/or non-distinctive;
• The two versions of the applied-for sound mark are comparable to series marks comprised of word and mildly stylised versions, which the Office’s Manual of Trade Marks Practice confirms are acceptable; and
• The alleged “conceptual difference” between the two versions of the marks was misguided because it difficult – perhaps even impossible – to discern any kind of conceptual meaning from the sound marks.

Happily, the Office was persuaded by our submissions and the series mark objection was waived. That then left the non-distinctiveness refusal, which we knew was always going to be the tougher obstacle to overcome.

The substance of the Office’s refusal under Section 3(1)(b) was that “the marks are devoid of any distinctive character. This is because the marks consist of a musical tune that would not be instantly recognisable as a trade mark by the average consumer. It is considered that without education, the public would not attribute any trade mark significance to the sign and would instead perceive the marks merely as a non-distinctive musical tune”. The reference to “without education” alludes to the possibility of relying on evidence of acquired distinctiveness or secondary meaning to support the application, but we already knew that this was not going to be an option on this case. Our arguments in reply to the non-distinctiveness refusal focused on the following main points:

• The Sandvik sonic logos were in the ‘sweet spot’ for a sound mark. They were not too short, nor too long, instead being an easily-recallable jingle or ditty;
• The precedent registrations from the EUIPO were referenced, particularly in view of the dearth of sound mark case law in the UK. They were presented as proof that consumers are able to perceive sound marks as being capable of functioning as trade marks without any prior exposure to them in the marketplace;
• The sonic logos possessed enough distinctiveness to pass the threshold of the minimum required standard. The pause or rest before the fourth note in particular creates an air of suspension, tension or perhaps intrigue amongst listeners. Consumers can recall the sound marks and repeat a purchase based on them; and
• Marketplace evidence indicates that sonic branding is on the rise, with consumer habits changing as a consequence. This means that the case law and practice relied upon to substantiate the refusal was outdated and defunct.

Nevertheless, the Office maintained the refusal saying that “while the sonic logos could be capable of performing a trade mark function and therefore being distinctive, this is not going to happen ab initio – a period of time for consumers to be educated to the sounds functioning as marks will be required”. And so, a Hearing was requested in order to be able to advance additional substance to the first instance statements, and also to put forward further reasoning as to why the objection was misplaced.

Charlotte Blythe of Hogarth Chambers was instructed at this juncture, in order to provide additional insight drawn from her previous experience of arguing against the alleged non-distinctiveness of sound marks at the UK IPO. Ahead of the Hearing, we supplemented our previous submissions by filing additional marketplace evidence that aimed to demonstrate that the relevant professional consumers are used to hearing and accepting sonic logos as functioning as indicators of trade origin and knowing them to be ‘brand stamps’.

At the Hearing itself, the Hearing Officer was carefully taken through the combined first instance and additional submissions, with particular emphasis again being placed on the apparent preparedness of the EUIPO to accept sound marks without any evidence of acquired distinctiveness. These precedent registrations, we asserted, should be regarded as highly influential since the underlying law was essentially the same, both being drawn from the same EU Trade Marks Directive. If the UK IPO’s refusal was maintained, this would, hypothetically at least, lead to a paradoxical situation where a relevant consumer in Dublin, Ireland would regard the sonic logos as trade marks, but an equivalent consumer about 100 miles away in Belfast, Northern Ireland would not. That would be illogical.

Ms Helen Davies, sitting as the UK IPO’s Hearing Officer, issued her decision just a few days following the Hearing. In what we regard as potentially being quite a landmark decision for the acceptance of sound marks based on their inherent registrability, Ms Davies waived the non-distinctiveness refusal in its entirety stating that:

“I would agree that the use of sonic branding is [now] prevalent in the manufacturing and industry sectors. I would also contend that in light of [the] submissions it is clear that consumer perception of sounds as trade marks has evolved and what might have been considered non-distinctive some decades ago may now be considered distinctive. I have also taken into consideration [the] compelling submissions and I agree that the marks have a certain resonance that will enable the target consumer to perceive and regard them as trade marks”.

Ms Davies’ comments appear to acknowledge a change in marketplace recognition of sound marks and perhaps usher in a welcome change in Office practice.

Finally Securing Protection

Following the Hearing Officer’s decision to waive the non-distinctiveness refusal under Section 3(1)(b) of the Act, the application was published on 29 September 2023 and proceeded to registration on 8 December 2023.

Sandvik was naturally very pleased with this outcome, with Ms Falck commenting:

“This was a case that was very important to Sandvik as we really want to stand out and be at the forefront in every aspect of what we are doing. Our business has evolved immensely during the last 5 years. Sandvik is no longer an old industrial company, but a world-wide high-tech engineering group with world-leading positions in several areas. This should be reflected in everything we do, including through our position, our brands, branding and how we secure protection for them.

We always felt that our new sonic logo was clearly recognizable and distinctive. We therefore really believed in the strength of our case at the UK IPO and so were willing to go all way. One of our core values at Sandvik is “Passion to win” and I think this case has really proven that.

It is important that our type of business can also benefit from sound mark protection, especially since the perceptions of our customers have changed to recognise sonic logos as being perfectly capable as functioning as trade marks, partly due to their experiences of sound marks being fundamental parts of the branding and marketing activities of companies in consumer sectors”.

As businesses continue to invest in creating memorable audio identities as part of their overall branding strategies, the UK's sound mark registration process remains a formidable hurdle. Whilst it remains important for a balance to be struck between the protection of the interests of both businesses and consumers, practice must also adapt to reflect the evolving perceptions and recognition of sound marks in the real world. Encouragingly, the Sandvik sound mark case suggests that we might be at the dawn of such a new approach from the UK IPO.