The infamous Tarzan yell was initially brought to life by Hollywood actor Johnny Weismuller. In a bid to protect this yell in the ring tone market, the Office for the Harmonisation in the Internal Market (OHIM) has recently deliberated whether it is capable of being registered as a trade mark.
Tarzan was created by Edgar Rice Burroughs. Edgar Rice Burroughs Incorporated applied to OHIM in 2004 to register Tarzan’s yell as an EU trade mark. A sound can potentially be registered as a trade mark if it can be written in musical notation. However, in this instance, the application comprised a literary description of the cry, accompanied by a spectrogram image depicting its frequency. This application was not accepted by OHIM as it did not consider a spectrogram an acceptable graphical representation when accompanied only by a description. It decided that nobody would be able to reproduce the yell from the spectrogram alone.
In 2005 the rules were changed to allow the filing of sound files in an electronic EU trade mark application together with a graphical representation. This allows the reader of the EU trade mark to actually hear the sound, thereby eliminating the difficulty of representing the sound in a graphical form. In 2006, subsequent to this change in the law, Edgar Rice Burroughs Incorporated submitted a spectogram accompanied by an MP3 file of the cry to OHIM. This application is pending.
Allowing sound files to form part of trade mark applications has broadened the range of sounds capable of trade mark registration. The sound files simplify the registration process as they form clear and self-contained representations of the sound in question.
Potential “sound mark” applicants should be aware of the change in the law when applying to protect any sound-based intellectual property.