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You can coin a phrase – but can you coin a sound?

14-04-2016

Video game super-company, Nintendo, has applied to trademark the two-tone coin-collecting sound in the ‘Mario’ series of games in Japan. The satisfying chime is synonymous within the franchise, yet also resonates across the brand as a whole, making it an extremely valuable commodity. But does the sound qualify for trademark protection?

Since his official debut in 1985, Mario has been jumping across our screens – devotedly capturing gold for avid gamers and casual players alike. Yet, more than 30 years later, Nintendo is only now applying to register the sound as a trademark.

The application follows a rule change at Japan’s Patent Office (JPO) in April 2015 that introduced revisions to its trademark registration parameters to include both sounds and colours.

In many respects, it’s surprising that Japan is relatively late out of the blocks in this matter; the EU and US, for example, have allowed unconventional signs (holograms, sounds, colours, smells) to be registered for some time.

Simply updating the law to enable sound registrations does not guarantee successful applications however, as shown in the differing – yet equally complex – guidelines put in place by the EU and US; the former requiring a sound mark to be represented graphically (i.e. in the form of musical notation) and the latter demanding a written description of the mark, accompanied by a recording.

An uncertain landscape

Such inconsistencies have led to real frustration on the part of big companies looking to safeguard their IP, with attempts at forward-thinking and innovative registrations arguably being punished due to slow processing speeds.

Most notably, Harley Davidson raised a few eyebrows when trying to protect the sound of its V-twin motorcycle engine. Having made the claim in 1994, the company became locked in a legal dispute as to whether it could satisfy requirements as to the uniqueness of the mark. It pursued the case until early 2000 before deciding to withdraw its efforts, resigned to the fact that it was no longer in the company’s economic interests.

Some high-profile sounds have been successfully protected, however, including:

  • The 20th Century Fox fanfare
  • The McDonald’s “I’m lovin’ it” jingle
  • Rue’s 4-note whistle (from the film The Hunger Games)
  • The Macintosh start-up chime
  • Darth Vader’s breathing
  • Homer Simpson’s “D’oh”
  • MGM lion’s roar
  • The Nokia ringtone

Nonetheless, the approach to even these registrations has not been consistent - some were accepted in certain jurisdictions, only to be rejected in others – highlighting how much variation there is when it comes to registering and upholding sound marks.

However, Japan’s actions are likely to have a positive knock-on effect within other Asian markets; particularly as India also adopted a similar rule change in 2009.  There is change afoot in other key jurisdictions too, with talk from the EUIPO of allowing digital sound files as an acceptable method of registration in future.

In a technology-driven world, in which everything and everyone is ‘plugged-in’, the role of audio-branding is only likely to grow. The subliminal power it has upon consumers potentially provides a massive commercial advantage across the marketplace, as brand leaders in the sector already know. The law may have some work to do if it is to catch-up and provide protection for such sounds. The question for the moment is whether the JPO will accept the mark and provide Nintendo with its own ‘Ka-Ching!’ moment.

David Gardner is a freelance journalist based in London.