Some of these marks consisted of a musical stave with the first notes of the musical composition “Für Elise”, others of “the first nine notes of ‘Für Elise’”, and still others of the sequence of musical notes “E, D#, E, D#,E, B, D, C, A”.

Other marks consisted of the word “Kukelekuuuuu” (onomatopoeia suggesting, in Dutch, a cockcrow) or of “a cockcrow”.

Mr Kist, a communications consultant, used the melody “Für Elise” and a cockcrow in an advertising campaign connected with his business. Shield Mark then brought an action against Mr Kist before the Netherlands courts for infringement of its trade mark and unfair competition.

The Hoge Raad der Nederlanden (Supreme Court of the Netherlands), before which the case eventually came, asked the Court of Justice whether the Community directive on trade marks allows sound signs to be registered.

The Court considers that the list of signs which can be registered as a trade mark, contained in Article 2 of the directive is not exhaustive. Signs which are not in themselves capable of being perceived visually, such as sounds, are therefore not expressly precluded from the directive. However, in order to be registered as a trade mark, a sound sign must meet certain conditions. First, it must make it possible to distinguish the goods or services of one undertaking from those of other undertakings. Furthermore, it must be capable of graphical representation, in particular by means of figures, lines or characters that are clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Those requirements are not satisfied by a graphical representation of the sound sign consisting in the indication that the sign consists of the notes making up a well-known work or in a simple sequence of musical notes, without more, or again by a graphical representation that is merely an onomatopoeia. In that case the graphical representation at the least lacks precision and clarity.

On the other hand, those requirements are satisfied if the sound sign is represented graphically by a musical stave divided into bars and showing a clef, notes and other musical symbols. This notation, as a whole, constitutes a faithful representation of the sequence of sounds which form the melody in respect of which registration is sought.

Unofficial document for media use only; not binding on the Court of Justice. Available in: DE, EN, ES, FR, IT, NL. The full text of the judgment can be found on the internet www.curia.eu.int  In principle it will be available from midday CET on the day of delivery. For further information please contact Christopher Fretwell: Tel: (00 352) 4303 3355; Fax: (00 352) 4303 2731