Recording sound as a brand: Zippo's successful challenge

Zippo finally got a mark about the sound of the famous lighter being opened and lit. In order to achieve his goal, Zippo had to show great patience and provide the American Trademark Office with extensive documentation. The company is now considering obtaining equivalent certificates in the European Union, Canada, India and China.

The sound mark: a theoretical possibility

Brands are not necessarily words or images. Easily memorable, melodies are often used in advertising to give a company a sound identity. So, whether it's because of the tune or the lyrics, we all remember the jingles of major brands ("Always Coca-Cola", "It's MAAF I like best").

In these examples, the sound perfectly fills the function of a brand, by acting as an indicator of origin. It is interesting to note that lyrics are sometimes superfluous. The roar of a lion in the credits of a film is enough to identify the creative studio.

Moreover, the law recognizes the ability of a sound to play the role of a brand. Thus, the French Intellectual Property Code (CPI) stipulates that "sound signs such as: sounds, musical phrases" can be registered as trademarks at the INPI.

Despite this, there are very few sound brands, either in France or abroad.

The practical difficulties posed by the sound brand

As is often the case with so-called "non-traditional" trademarks, the main difficulty lies in the condition of graphic representation of the trademark. Indeed, according to article L.711-1 of the IPC, this is a condition for the validity of the application. However, unlike marks made up of an odourIf we look at the spectrogram, we can easily imagine representing a sound by a staff of notes or a spectrogram.

However, offices have long been very cautious in accepting these non-traditional marks. For example, the European Union Trademark Office (EUIPO) refused to register the Metro-Goldwyn-Mayer (MGM) lion roar in 2005 because it considered that the following sonogram was not capable of recognizing the sound in question:  Similarly, CIPO (the Canadian Intellectual Property Office) had refused to register MGM's trademark. But the film producer had appealed against this decision. As a result, in 2012 he was granted the 1^er certificate of registration for a sound mark in Canada.

Zippo also encountered difficulties recording the "click" of the storm lighter. The American company had already made a first attempt in 1999, which was abandoned after two years of proceedings. In 2016, the company highlighted the iconic character of the lighter, and this click was immediately recognizable.

Zippo : 1^era step for a better acceptance of sound marks

Zippo provided the USPTO with testimonials from filmmakers to show the mythical character of the lighter in the American audiovisual landscape. The lighter has been used in more than 2,000 films, including Indiana Jones, Pulp Fiction and Die Hard. Zippo also provided a studio recording of the sound. These elements convinced the American office, which issued a registration certificate at the beginning of December 2018.

It is likely that this decision of the USPTO expresses a more global change in the Offices. Indeed, since the reform of the "trademark package", there is no longer any legal requirement for graphic representation in Europe. An applicant will therefore be able to register his trademark in any appropriate form, provided that it is accessible to all. It's easy to imagine a filing consisting of a sound recordingwhich can be played from any computer.

However, one difficulty remains: how to integrate these new brands into the databases? How to perform a prior art search among non-traditional trademarks?

It will be necessary to wait for future filings, to know the position of the offices.