C-283/01

5 — Bagatelle in A minor (WoO 59). 6 — The composer himself gave the piece the subtitle 'Memories 3. The Hoge Raad der Nederlanden raises of 27 April 1808', the date on which he was invited to a gathering at which he met various children of different ages. the question whether sensations induced by His attention was much drawn to a beautiful girl, called Elise, who, upon being informed who the visitor was, sound satisfy the requirements of the approached him and said that she, too, was an artist, since abovementioned provision which a sign she could play the piano. Before leaving, Beethoven asked her to demonstrate her abilities and Elise interpreted works must fulfil in order to be regarded as a by various composers, but, when he suggested that she play one of his sonatas, the girl replied, in some distress, that she could not, because they were very difficult to play. The maestro promised that he would compose a simpler piece so that she would be able to play it on the piano (commentary 1 — Original language: Spanish. by K. Groenewolf, cited in the review 'Ángulos', June 1994, p. 29). Other critics, such as A, Reverter (Beethoven, Ed. 2 — First Council Directive 89/104/EEC of 21 December 1988 Peínsula, Barcelona, 1996, 2 Edition, p. 115), believe to approximate the laws of the Member States relating to that the bagatelle was composed in 1810, as part of a trade marks (OJ 1989 L 40, p. 1; 'the trade mark directive' quartet of various pieces under the name not of Elise but of or 'the directive'). Teresa Malfatti, one of the impossible loves of the musician 3 — Case C-273/00 Steckmann [2002] ECR I-11737, in which I from Bonn. The change in title was due to an unexplained delivered my Opinion on 6 November 2001. error by the editor Noht, who published it in 1867. See, to 4 — Case C-104/01 Libertei Groep, in which Advocate General the same effect, W. Kinderman, Beethoven, Oxford Univer- sity Press, Oxford-New York, 1995, p. 146. Léger delivered his Opinion on 12 November 2002.

7 — Those identified by numbers 517166, 835113, 931683 and 931688, the purpose of which is to distinguish goods and 11 —Those registered with numbers 835114 (classes 9, 16, 35 services in classes 35 and 41 (the first trade mark), 9 and 16 and 41) and 931685 (classes 9, 41 and 42). (the second) and 16, 41 and 42 (the third and fourth) of the International Trade Mark Nomenclature. 12 —The onomatopoeia of a cockcrow in the various official languages of the European Union is as follows: kikiriki, in 8 — Numbers 535083 and 835115. The first represents services German; kikeli-ki in Danish; quiquiriquí, in Spanish; in classes 35 and 41, while the second distinguishes goods in kukkokiekuu, in Finnish; cocorico, in French; kokoriko, classes 9 and 16. in Greek; cock-a-doodle-doo, in English; chichirichi, in 9 — Trade marks numbers 931687 and 931689, both for classes Italian; kukeleku, in Dutch; cocorocócó, in Portuguese; 16, 41 and 42. and kukeliku, in Swedish. 10 — With numbers 839419 (classes 9, 16, 35 and 41), 931684 13 — Number 931682, for products in class 9 and services in (classes 16, 41 and 42) and 931686 (classes 16, 41 and 42). classes 41 and 42.

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10. Shield Mark also developed a computer the claim in so far as it was based on trade program for lawyers and marketing special- mark law and upheld the claims based on ists, which provided them with information the defendant's unfair conduct. on choosing and protecting a trade mark. When the program is run, a strident cock- crow is heard.

I I — The questions referred to the Court

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OPINION OF RUIZ-JARABO — CASE C-283/01

sound marks as regards the refer- — a digital recording accessible via ence in Article 2 to the need for the the internet; sign to be capable of being repre- sented graphically and, in conjunc- tion therewith, as regards the way in which the registration of such a trade mark must take place?

— a combination of those methods;

2 (b) In particular, are the requirements referred to in (a) satisfied if the sound or the noise is registered in one of the following forms: — some other form and, if so, which?'

— musical notes;

15. The legal concept of a trade mark to capture it in a decisive passage in In therefore consists of two elements: ability search of lost time, where the narrator asks to distinguish and capacity to be repre- 'whether music is not the only example of sented graphically. In order to be capable what — had language, the formation of of being used as a trade mark, a sign must words, the analysis of ideas not been combine both qualities. invented — might have been the com- munication between souls. It is a possibility which was not subsequently developed; humanity followed other routes, the way of spoken and written expression'. 1 9This 16. In my Opinion in Sieckmann, cited idea is based on the philosophy of Scho- above, I stated that human beings perceive penhauer, expressed in his work The world and recognise messages, i.e communicate as will and representation, in which he by means of senses other than sight, 1 5so assigns to music the same revelatory and that they can be used in a trade mark, 16 transcendent function as that subsequently because they are capable of having 'some attributed to it by Proust's work, avoiding distinctive character'. 17 the poetic explanations and with the same attention to time. 20

19 — M. Proust, À la recherche du temps perdu, La prisonnière, 15 — W. Benzov, Beethoven's Anvil, Music in Mind and Ed. Gallimard, La Pléiade, Paris, 1988, Vol. III , pp. 762 Culture, Ed. Basic books, New York, 2001, p. XI et seq., and 763. contains a fascinating study of the idea that music connects 20 — A. Schopenhauer, Le monde comme volonté et comme the human being with the social world. représentation, Ed. P.U.F., translated by A. Burdeau 16 — See point 21 et seq. (1888), revised and corrected by R. Roos, Paris, 1966, 17 — Point 28 of my Opinion of 24 October 2002 in Joined p. 340. Cases C-53/01 to C-55/01 Linde and Others, in which 21 — A. Henry, Marcel Proust, Théories pour une esthétique, judgment has not yet been delivered. Ed. Kliencksieck, Paris, 1981, p. 303. 18 — See paragraph 42 and the first paragraph of the operative 22 — J.J Nattiez, Proust musicien, Ed. Christian Bourgois, Paris, part. 1975, p. 162.

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18. Thus, because they have the capacity to mark may consist. 28 distinguish, auditory messages may, in principle, be trade marks. 24 However, the doubts expressed by the Hoge Raad go much further and, once it is accepted that that provision envisages, without expressly referring to them, 25 other signs distinct from visual signs, asks whether the Member States are free to preclude sounds 20. The single market, without barriers to as indications capable of constituting that the free movement of goods and freedom to class of property. provide services, requires that the protec- tion given to a trade mark in one Member State be equal to that afforded in another 23 —J.J. Nattiez, ibid., p. 121. Member State, and for that reason it is 24 — The French and Netherlands Governments, and also Shield Mark, stated in their written observations that in the joint essential that throughout the entire terri- statements made by the Council and the Commission on tory of the European Union the same trade the occasion of the adoption of the Directive on trade marks (Declaration 9142/88) and the Regulation on the mark be regarded and protected as such.

communication. Not insignificantly, the first meaning of that signifier in Spanish is 'sonido o conjunto de sonidos 26 — See the first and third recitals. articulados que expresan una idea' (Diccionario de la Real Academia de la Lengua). In French, mor means, primarily, 27 — See the fourth and fifth recitals. chacun des sons ou groupe de sons correspondant à un 28 — '. . . attainment of the objectives at which this approxi- sens, entre lesquels se distribue le langage (Le Fetit mation of laws is aiming requires that the conditions for Robert).

. .' (seventh buch). recital).

29 — Article 3(1 ) of the Gesetz über den Schutz von Marken und 24. By reason of the foregoing reflections, I sonstigen Kennezeichnungen (German Law on the pro- tection of trade marks andother signs) of 25 October 1994 propose that the Court of Justice should (BGBl. 1994, I, p. 3082). rule, in answer to the first question referred 30 — Article 16(2) of the Markenschutzgesetz (Law on the protection of trade marks) of 1970 (BGBl. 260), as by the Hoge Raad, that Article 2 of the amended by Laws BGBl. I 111/1999 and BGBl. I 191/1999. Directive not only does not preclude sound 31 — Article 4(2)(b) of Ley 17/2001 de Marcas (Law on Trade signs from being trade marks but prevents Marks), 7 December 2001 (BOE, 8 December 2001, the national legal orders from precluding p. 45579). 32 — Article 711-1(b) of the Code de la Propriété Intellectuelle, them from that condition a priori. as amended by the Law of 4 January 1991. 33 — Article 1(2) of Law 2239/1994 (ΦΕΚ A' 152). 34 — Article 16 of the Testo delle dispozicioni legislative in materia di marchi registrati (Law on trade marks), 38 — Article 1(2) of the Tavaramerkkilaki 7/1964 (Law on trade approved by Royal Decree 929 of 21 June 1942 (GURI marks). 203, 29 August 1942), as subsequently amended. 39 — Section 6(2) of the Trade Marks Act 1996. 35 — Article 165 of the Código da Propriedade Industrial. 40 — Section 1(1) of the Trade Marks Act 1994. 36 — Article 1 of the Benelux Uniform Law on trade marks (Nederlands Traktatenblad 1962, No 58, pp. 11 to 39), as 41 —Article 1 of the Varumärkeslagen (1960:644) (Law on amended, with effect from 1 January 1996, oy the Protocol manufacturing and trade marks). of 2 December 1992 (Nederlands Traktatenbiand 1993, 42 — The United Kingdom Trade Marks Registrar has allowed No 12, pp. 1 to 12). registration of musical sound marks 2030045 (Direct Line jingle) and 2013717 (Mr Sheen jingle). At the end of 2002, 37 — Article 2(1) of the Varemaerkeloven (Law 162 of the Office for Harmonisation in the Internal Market had 21 February 1997 on trade marks). registered nine sound marks.

26. This requirement is not unimportant and has its raison d'être in the system of registration central to the Directive, 44 in which the exclusive rights conferred by ownership of a trade mark are acquired by means of its entry on the register. 45 'If an undertaking reserves certain signs and ref- 28. Consequently, '[s]igns comprising a trade mark are represented graphically in order to protect and publicise their appro- 43 — See footnote 50 of my- Opinion in Steckmann. The Spanish priation by an undertaking, which has Trade Marks Bill, to which that footnote refers, is now reserved the signs for itself with the aim Law 17/2001, cited above. 44 — See the fourth recital and Article 1. of individualising the goods or services it 45 — See Article 5 of the Directive. The sixth recital of the offers'. 49 Regulation on the Community trade mark clearly expresses that idea: 'the rights in a Community trade mark may not be obtained otherwise than by registration'. Advocate General Léger, in his Opinion in Libertei Groep, cited above, states that 'it is the graphical representation of 46 — Point 36 of my Opinion in Sieckmann, cited above. the sign set out in the application for registration that 47 — See point 36 of my Opinion in Sieckmann and paragraph allows an assessment to be carried out of whether all the conditions relating to the acquisition of rights to the trade 37 of the judgment in that case. mark are complied with and that determines the rights and 48 — See paragraph 48 et seq. of the judgment in Sieckmann. obligations conferred by its registration' (point 65). 49 — Point 38, in fine, of my Opinion in Sieckmann.

29. That objective is not attained by every 32. The answer must be more nuanced figure perceptible by sight, since the repre- than in the case of smells, where I said that sentation must be 'clear, precise, self-con- such a class of signs is not capable of being tained, easily accessible, intelligible, dur- represented in the manner required by able and objective'. 50 It must be easily Article 2 of the Directive. 51 accessible and intelligible so that virtually all those interested in consulting the reg- ister, consisting of other producers and consumers, are able to understand it. It must be clear, precise and complete so that the indication which is used may be known beyond doubt. It must be durable and objective so that neither the passing of time 33. Where sounds are concerned, the sol- nor the change in the addressee will affect ution does not have to be so categorical. the identification or the perception of the First of all, as I have already stated, 52 oral sign. language is merely communication by sound and writing is its graphical represen- tation. In the abstract, the capacity of sounds to be reproduced in writing is undeniable. 30. Since, as I have stated, the indications of which a trade mark consists need not necessarily be visual, those qualities of the representation must be adapted to the particular nature of those indications, in such a way that they are identified accu- rately. 34. It is for the courts of the Member States to determine, in each case, whether the 'drawing' of a specific acoustic sign satisfies the objectives which the Community legis- 2. The different forms of graphical repre- lature pursues by means of the requirement sentation of the sounds for representation. That view is shared by Shield Mark, the Netherlands and Italian Governments and the Commission. The Hoge Raad's request that, irrespective of the facts of the case 53 and in the abstract, the Court of Justice should rule on different 31. As regards the signs which are per- forms of representation of a sound ignores ceived by hearing, I must therefore ask the nature of the judicial process, the myself the same questions as in my Opinion purpose of which is to provide an answer in Sieckmann concerning olfactory mess- ages: Can a sound be 'drawn'? Can an auditory signal be graphically represented 51 — Concerning the difficulties in graphically representing in a way which is precise and clear for olfactory trade marks, see point 39 et seq. of my Opinion everyone? in Sieckmann. 52 — See footnote 25. 53 — It will be recalled that the trade marks in the main proceedings — only some — are sound signs represented by musical notation or a description, or by a sequence of 50 — Paragraph 55 of the judgment in Sieckmann. notes, or by an onomatopoeia.

39. In order to attain that objective, it is essential to reflect the sounds by means of their musical notation, so that they are perfectly recognisable and leave no room 36. As the Commission observes, there is for doubt. And there is only one way of nothing to prevent the Court of Justice, doing that: by setting them out on a without interfering in the facts of the case musical stave. With that universal lan- and for the purposes of the interpretation guage, the diffused drawing consisting of sought, from providing some general rules the sequence of notes, called by name, about the forms of graphical expression seems to. be clear, with its precise contours which, proposed by the Hoge Raad in its to identify it, differentiating it from others. second question, concern the trade marks The notes written on the stave, together relied on in the dispute which it is hearing with the key, which determines the tonal- and the resolution of which prompted the ity, the time signature, which determines question referred to the Court: the repre- the rhythm, and the relative value of each sentation by musical notes and the descrip- note, and also an indication of the instru- tions using written language. ments which are to interpret them, are a faithful 'photograph' of the sequence of sounds which are represented; if I may say so, they are their 'fingerprint'.

37. Concerning the capacity to be repre- sented graphically, in the universe of mess- ages which are perceived by hearing it is 40. That form of representation of sounds necessary to distinguish two categories, one fulfils the requirements indicated by the consisting of sounds capable of being Court of Justice in Sieckmann. It is clear, expressed by musical notes and the other precise, self-contained, durable, objective consisting of all other sounds. and easily accessible. It is true that it is not

44. The position is even less certain if the description constitutes an onomatopoeia. That is illustrated by the case before the national court. In the official languages of 41. Most persons seeing the sign are not the European Union, the written repro- familiar with musical notation, which is the duction of the sounds which imitate a technique intended to enable musical texts cockcrow is in reality varied and diverse. 56 to be sung correctly, but when the score is It would be difficult for the average British, read by an expert the uninformed are able Spanish, Portuguese or Italian citizen to to understand the sound sign without risk realise that kukeleku represents a cock- of confusion as to its identity. 54 crow. However, there may be circum- stances in which that form of graphical representation would be sufficiently expressive and satisfy the purpose of the provision. That is a matter to be deter- mined by the national courts in each case. 57 (b) The descriptions of the sounds

C. A final brief digression 47. On the basis of the foregoing reason- ing, I propose that the answer to the second question referred by the Hoge Raad be: 48. In preliminary ruling proceedings, the Court of Justice must provide the court of referral with the appropriate answer according to the parameters imposed by the law. The facts of the main proceedings — the graphical representation of sound place the question in its context and make marks must be clear, precise, self-con- its impact easier to understand, so that the tained, easily accessible, intelligible, solution, given in general terms owing to its durable and objective; role in arriving at a uniform interpretation, may prove most useful to the resolution of the dispute before the national court.

— it is for the competent national court to determine in each case, on the basis of 49. In a case such as the present, in order to the relevant facts, whether such carry out its interpretative task, the Court requirements are satisfied; of Justice only needs to know that some of the trade marks at issue before the Hoge Raad are distinctive acoustic sounds. How- 59 —That is the case of Time Warner, who, in July 2001, ever, it must not be overlooked that the registered as a sound mark the 'Merry Melodies' ¡ingle, sound signs which Shield Mark claims as which for 50 years has accompanied the animated cartoons of Hanna & Barbera. Another example is Tarzan's cry, being in its exclusive ownership are a registered as a trade mark, also in the United States of America, by Edgar Rice Burroughs. cockcrow and the first notes of what is

50. Registration of a trade mark confers a monopoly on its owner, so that, in prin- ciple and as a general rule, he is able to prevent its use by others. In my Opinion in 52. I find it more difficult to accept, and Arsenal, 62 I stated that any extension of the this is the second refinement, that a cre- catalogue of signs capable of constituting ation of the mind, which forms part of the this form of industrial property must be universal cultural heritage, should be accompanied by a precise delimitation of appropriated indefinitely by a person to the rights which registration confers on the be used on the market in order to dis- owner. 63 The time seems to have come to tinguish the goods he produces or the add that particular care must also be services he provides with an exclusivity exercised when a person is granted the which not even its author's estate enjoys. 67 exclusive use on the market of a sign, whatever sense it is perceived by. 64 — Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779. 65 — Case C-299/99 [2002] ECR I-5475. 60 — A. Orga, Beethoven, Ed. Robinbook, translated by Imma 66 — See point 19 et seq. of my Opinion in Linde, cited above. Guardia, Barcelona, 2001, p. 24, refers to the admiration 67 — It will be recalled that, under Article 1(1) of Council of Mendelssohn, Schumann, Liszt and Bizet for Beethoven, Directive 93/98/EEC of 29 October 1993 harmonising the and also to that of Wagner, Bruckner, Mahler and term of protection of copyright and certain related rights, Debussy. W. Kinderman, op. cit., p. 1, recognises that no the rights of an author of an artistic work, such as composer occupies such a central position in musical life as Beethoven's 'Für Elise', are to run for the life of the author Beethoven. and for 70 years after his death. 61 — M. Steinitzer, Beethoven, Ed. Fondo de Cultura Econ- Copyright protects the work itself. Trade marks, on the ómico, Mexico, 1953, p. 51, describes how on various other hand, do not claim to protect original creations: their occasions Beethoven called Handel the greatest of all the purpose is to allow the goods or services offered by masters of music. See also F. Kerst, Beethoven, The Man undertakings to be distinguished on the market. It may and the Artist as Revealed in his Own Words, Dover happen, however, that a sign is an original work protected Publications Inc., English translation by Henry Edward by copyright at the same time, in which case it is necessary Krehbiel, New York, 1964, p. 54. to regulate their reciprocal interrelations. A. Bercovitz has analysed them in his work 'Marcas y derecho de autor', 62 — Case C-206/01 Arsenal [2002] ECR I-10273. published in Revista de Derecho Mercantil, No 240 63 — See point 61. (2001), pp. 405-419.

(3) It is for the competent national court to determine in each case, on the basis of the relevant facts, whether such requirements are satisfied.

(4) However, those requirements are generally satisfied where the representation takes the form of a musical stave.

(5) On the other hand, descriptions using written language, including onomato- poeia and the word sequence of musical notes, are normally insufficient.

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