The CPTPP Agreement came into force, setting the task for member countries to establish a mechanism to protect non-traditional trademarks. With the protectionist experience of many other countries and CPTPP member states, Vietnam is gradually inheriting the legislative experience as well as the protectionist practice from these countries to build a separate protection mechanism for audio brands.
About the protection of audio trademarks in the world
A sound mark can be a piece of sound, it can be a combination of different types of sounds (such as musical instruments, vocals, animal calls, sounds from other objects, etc.) so that the average consumer can remember and distinguish it (according to the US Trademark Law definition of a sound mark). The first sound trademark to be protected in the world was NBC’s “3 Rings” trademark (No. 916522) from 1971 for radio service in the United States.
Conditions for protection of sound marks
Similar to traditional trademarks, sound marks must also meet the same standards as ordinary marks as a sign capable of distinguishing from previous marks of the same genre within the country for the product category. goods/services claimed. The process of trademark examination in the United States and Australia shows that sound marks can be refused on both absolute and relative grounds (1). In particular, the absolute refusal applied to sounds containing words will apply the same way as the examination of word marks in normal trademarks, i.e. words in sounds (if any) will not be contained. word marks are excluded from protection and are indistinguishable. In addition, sounds may be denied protection if the sound fails to function as a trademark due to the description of the goods/services bearing it.
Sound marks are also subject to relative disapproval if deemed to be identical or similar to pre-existing sounds. Although it is not clear under what circumstances the sound mark claimed to be similar to a previously copyrighted musical work, in the case of objection, the sound mark is entirely valid. may be refused on this basis if the owner of the copyright, pre-existing musical work can prove that the sound mark has copied part of his work. The legendary Nokia Tune tune, protected by the USPTO (No. 2413729) since 2000 is a special case, although in fact, Nokia Tune is a tune taken from a work for guitar solo called Grande Valse do Francisco Tárrega (a Spanish classical composer) wrote in 1902.
Audio trademark claims are generally based on a trademark description consisting of a musical notation or MP3 files with a suitable graphical representation that identifies the pitch and duration of the sound – creating to an audio file corresponding to the sequence of sounds forming the tune in question (Australian guidelines) or a graphic may be submitted with an electronic file an ultrasound, i.e. a histogram graphics, showing the distribution of energy at different frequencies (EU guidelines). The USPTO requires the applicant to submit a copy of the sound associated with the sound mark for purposes of supplementing and clarifying the description of the proposed sound (2).
The graphical interpretation allows the examiner to examine the sound mark on a “visible” basis and then compare it with other pre-existing sound mark graphics. Assessors become sound experts to identify sounds in claims and issue assessment notices.
Sound marks can also become well-known trademarks, as is the case with Time Warner Entertainment’s “Looney Tunes Theme Song” audio trademark (registration number 2469364), protected in 2001 (3). The music was so popular that the audience of the Looney cartoon at that time only needed to listen to the music to know what was going on in the film. Although “Looney Tunes Theme Song” has been protected as a musical work before, it will continue to be protected as an audio mark for a longer term if the owner continues to renew and file the license. evidence of suitable commercial use. Some other sound brands have become well-known trademarks in the United States such as “Lion Roar” No. 1395550 (1986), “Drum Sound” No. 2000732 (1996) by Twentieth Century Fox.
In addition, in order to maintain the validity of an audio mark, in addition to proceeding with the renewal procedure, the trademark owner must also submit proof of use (in the United States) as required for any ordinary trademark, and may be voided if not used in accordance with the traditional trademark regulations in each country.
Protection of audio marks under the Draft Law amending and supplementing a number of articles of the Intellectual Property Law
The above issues of sound trademark have been studied for a long time and are gradually becoming reality through the current project to amend Vietnam’s Intellectual Property Law (IP Law). One of the new features of this law project is the draft law that expands the protection of audio marks to ensure the implementation of Vietnam’s commitments in the CPTPP and EVFTA Agreements. However, examining this content, the Law Committee of the National Assembly said that the amendments in Clauses 31, 32 and 33 Article 1 of the draft Law have not yet ensured the consistency and feasibility for the law. protection of audio trademarks.
Deputy Chairman of the Legal Committee Nguyen Thi Mai Phuong said that in addition to the application of general regulations on trademarks for audio marks, it is necessary to add some specific provisions for this trademark to ensure its validity. implemented in practice. However, Clause 1, Article 72 of the current Law is only allowed to add the content “or sound signs displayed in graphic form” and the draft Law does not stipulate how to be considered “graphical form”. “. Therefore, it is necessary to clarify whether an audio mark is protected in other forms? Along with that, the way in which sound signs and sound mark samples are displayed when registering is a rather complicated issue, it is necessary to specify specific regulations to both ensure the requirements for the assessment of distinctiveness. distinctive features of the registered mark but also needs to facilitate publication of the application and record keeping. However, Article 105 of the Current Law on trademark registration applications has not been uniformly amended to clarify the requirements for sound trademark applications. Therefore, it is proposed to study and add to Article 105 some specific requirements in the application for registration of an audio mark, as a basis for detailed provisions in the guiding document.
Regulations on protection of sound marks (Clause 1, Article 72, Clause 1, Article 73, and Clause 2, Article 74 of the Intellectual Property Law as amended and supplemented according to Clauses 31, 32 and 33, Article 1 of the draft Law) are also recognized. received the attention and suggestions of many experts and scientists in the field of IP.
Commenting on this regulation, Assoc. Prof. Dr. Le Thi Nam Giang, Lecturer at Ho Chi Minh City University of Law, said that the current draft IP Law has not yet ensured the uniformity, uniformity and effectiveness in protection. sound trademark. According to Assoc. Prof. Dr. Le Thi Nam Giang, sound protection is a very new issue for not only Vietnam but also many countries around the world. The inclusion of sound trademark protection in the draft Law is not to meet the current practical conditions because the time we have to enforce the law is very early (January 2022) but mainly for us to do. international commitments. Therefore, when protecting an audio mark, it is necessary to review the provisions of the law so that this provision can be applied in practice when implementing.
With the current regulations, in fact, we are lacking a legal basis for refusing to protect audio trademarks in two situations. As for an audio mark made up of a simple sound, we can immediately add it to point a, clause 2, Article 74. In which, the exclusion of the protection of a simple sound mark is included, except for the following fields: if this sign has been widely used and recognized as a trademark prior to the filing date. And similar to the fact that an audio mark is identical or similar to a musical work or is part of a musical work, we now have no grounds to refuse while an audio mark has may be composed of musical works or other sound signs such as human noises, natural sounds… Therefore, it is proposed to add to the provisions at point p, clause 2, Article 74. case of exclusion of sound trademark protection in a work covered by another person’s copyright prior to the filing date.
In addition, Assoc. Prof. Dr. Le Thi Nam Giang proposed to supplement regulations on sound mark samples specified in Article 105 of the Intellectual Property Law and may prefer trademark samples to be displayed in graphic form or may be attached to a slide file. trademark template. Explaining this proposal, Assoc. Prof. Dr. Le Thi Nam Giang said, adding this regulation because the sound mark sample is an extremely complicated issue. Currently, the laws of other countries protect the sound mark. bars also stipulate not quite the same. With a new subject, we should have a guide and should detail in the law, not the sub-law document, on the requirements for the trademark template.
Totally agree with the Sound Trademark Drafting Board that it’s just a special trademark and therefore the same principles that apply to normal trademarks will also apply to audio marks. However, from the specificity of the sound brand, Assoc. Prof. Dr. Le Thi Nam Giang suggested that there should be amendments and supplements to ensure the synchronization. At the same time, Assoc. Prof. Dr. Le Thi Nam Giang wants the Drafting Board to study more clearly about the sound signs that can be shown under the graphic that is being added in Article 72 because the sound signs are very wide.(4)
Regulations on protection of audio marks in particular and the draft Law amending and supplementing a number of articles of the IP Law in general, are currently continuing to be studied and adjusted by the drafting agency to ensure regulations. suitable and highly feasible; ensure the highest quality of the draft law before submitting it to the 15th National Assembly for consideration at the next 2nd session.
The article references the following sources:
(2) Point 904.03(d) TMEP, https://tmep.uspto.gov/RDMS/TMEP/Oct2012#/Oct2012/TMEP-900d1e713.html.
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