4 Steps to Register a Trade Mark to Protect a Sound
George Raptis
Sounds can become an essential part of a business’ brand identity. Think of the iconic sound of trumpets, accompanied by the sound of children singing, “We’re happy little Vegemites as bright as bright can be.” This catchy tune became part-and-parcel with the widely renowned food spread. Like other parts of a brand identity, it is worth protecting your intellectual property via registered trade marks. To help, this article outlines four steps you should take to register a trade mark to protect your business sound.
1. Identify Your Sound Trade Mark
If your unique sound file can distinguish your business from others, you may be able to register a trade mark to protect your sound. A registered trade mark gives you the exclusive right to use, license and sell your trade mark. This means that you can take legal action in the instance where someone misuses your sound trade mark. A standard trade mark provides you with 10 years of protection, which you can renew indefinitely.
To register a trade mark for your sound, you must submit a sound file with your application. Additionally, you must be able to represent the sound graphically. This might mean that you provide IP Australia with the musical notation of your tune or an accurate description of the sound.
For example, the glass repair company O’Brien owns a sound trade mark. Their endorsement describes the sound trade mark as “the vocal harmonisation of the letter ‘O’ followed by the word ‘O’BRIEN’ rendered as ‘O’, ‘O’, ‘O’, ‘O’BRIEN’.”
However, you should note that IP Australia is unlikely to register your sound trade mark if it is too common to sounds used by other traders in your industry. This is because other traders will likely want to use the sound for similar goods and services. For example, barnyard sounds for farmyard services or pet food stores are commonplace sounds in the industry. Additionally, the sound of a motor vehicle starting up would be commonplace for businesses in the motor repair and vehicle sales industry.
If you create a sound (such as a unique tune or catchy jingle) that consumers identify as part of your brand, IP Australia may approve your sound trade mark for registration.
2. Classify Your Trade Mark
When you register a trade mark with IP Australia, you must select the goods and services you seek protection over. For example, ‘The Happy Little Vegemite’ tune is registered concerning foodstuffs and plant-based products for human consumption.
To ensure that your sound trade mark comprehensively protects your business’ goods and services, you should consult the Trade Mark Classification Search. The search classifies common goods and services that registered trade marks can cover into 45 classes where:
- classes 1 to 34 contain goods; and
- classes 35 to 45 contain services.
To use the Trade Mark Class Search, you should search for keywords that describe your business. When entering keywords, consider the nature of your business’s goods and services and how your customers recognise your business.
It is also easy to fall into the trap of including too many classes in your application to gain additional protection. However, you should avoid this, considering the more classes you include, the higher the cost of your application. Additionally, including multiple classes can cause problems down the line where competitors challenge your registration because you have not used it for the full range of goods and services covered.
3. Conduct a Trade Mark Search
If you have created a unique sound, you might assume that no other person or company has registered a similar sound trade mark. However, there is a chance that someone has registered a similar trade mark concerning similar goods and services.
To find out whether someone has registered a similar sound, you should search the Australian Trade Marks Online Search System. Since IP Australia lists registered trade marks on a public database, you can search for your sound on the database. Although you cannot upload a sound file to search the database, you can search for similar or identical sound trade marks by entering a description of your sound.
4. Register Your Trade Mark With IP Australia
Once you have completed the steps above, you should consider lodging a trade mark application with IP Australia. You can do this via IP Australia’s online services platform. In your application, you must provide:
- your details including contact address;
- a representation of your trade mark, i.e. a sound file and description of your sound;
- the classes of goods and services you intend to apply for; and
- the filing fee.
To find out more about protecting your sound trade mark and assistance with the application process, get in contact with one of our lawyers.
Key Takeaways
If a sound can distinguish your business from others, you may be able to register a trade mark to protect that sound. To register a sound trade mark, you must:
- include a file and a written description of the sound in your application;
- classify your trade mark in the appropriate class or classes;
- conduct a trade mark search to ensure someone has not already registered your sound trade mark; and
- file a trade mark application with IP Australia.
If you have further questions about registering a trade mark for a sound, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
There are 45 classes of trade marks available on IP Australia. You should run a search on their website regarding which trade mark classes are most relevant to your trade mark application. For example, classes 1-34 are related to goods, and classes 34-45 relate to services. You should not apply for more classes than necessary because this increases the cost of your application.
To find out whether someone has registered a similar sound, you should search the Australian Trade Marks Online Search System.