European trademark law swinging from vines

Unlike in the good old U.S. of A., Tarzan’s yell doesn’t cut it in Europe — at least not as a trademark:

Tarzan’s distinctive yell cannot be registered as a trademark because it is almost impossible to represent graphically. Sounds can be registered as trademarks, but the ruling (pdf) could limit that to sounds that can be written in standard musical notation.Tarzan was created by Edgar Rice Burroughs and the application to register as a trademark the sound of the jungle resident’s scream was made by Edgar Rice Burroughs Incorporated. The Office for Harmonisation in the Internal Market (OHIM) refused the application on appeal.

The application had included two pictures said to represent the sound of Tarzan’s call, one an image of a wave form representation of the sound, the other a spectrogram of the frequencies of the yell.

“What has been filed as a graphic representation is from the outset not capable of serving as a graphic representation of the applied-for sound,” said the OHIM ruling. “The examiner was therefore correct to refuse the attribution of a filing date.”…

The OHIM ruling creates a problem for people trying to register sound marks that are not music, since it said that musical notation is the valid way to express sound files and some sounds cannot be expressed in that way.

Yes, problem indeed. The applicant even tried to describe the yell verbally:

‘The mark consists of the yell of the fictional character TARZAN, the yell consisting of five distinct phases, namely sustain, followed by ululation,followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by therepresentations set out below, the upper representation being a plot, over the time of the yell, of the normalised envelope of the air pressure waveform and the lower representation being a normalised spectrogram of the yell consisting of a three-dimensional depiction of the frequency content (colours as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis).’

In other words, a Tarzan yell. Indeed, the decision sets forth, as one argument of the appeal, “[Applicant] maintains that it is perfectly clear what the present mark is. It is the sound of the fictional character Tarzan yelling, a sound that is well-known throughout the European Community. Virtually everybody would be able to tell you ‘what is the Tarzan yell?’. ” Yet as the tribunal notes, “everybody knows” is not evidence; and the esoteric graphic depictions of the yell proffered as specimens are not meaningfully amenable to reproduction, much less ready recognition. What good is a trademark registration when the public cannot be put on actual notice, on investigation, of what the mark is?

The solution would seem to be an amendment of the relevant statute permitting the use of sound files, which in this day and age should be roughly as accessible as visual files, as trademark specimens. If we accept the premise of sound trademarks at all it’s hard to imagine why they aren’t not only permitted, but required as the most preferred form of exhibit. I’m going to have to ask Jane what I’m missing here.

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Author:Ron Coleman

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7 Responses to “European trademark law swinging from vines”

  1. November 1, 2007 at 10:16 am #

    Tarzan’s yell is registered in the US for toy action figures (Reg. No. 2210506).

    The mark is described as follows:

    “The mark consists of the sound of the famous Tarzan yell. The mark is a yell consisting of a series of approximately ten sounds, alternating between the chest and falsetto registers of the voice, as follow – 1) a semi-long sound in the chest register, 2) a short sound up an interval of one octave plus a fifth from the preceding sound, 3) a short sound down a Major 3rd from the preceding sound, 4) a short sound up a Major 3rd from the preceding sound, 5) a long sound down one octave plus a Major 3rd from the preceding sound, 6) a short sound up one octave from the preceding sound, 7) a short sound up a Major 3rd from the preceding sound, 8 ) a short sound down a Major 3rd from the preceding sound, 9) a short sound up a Major 3rd from the preceding sound, 10) a long sound down an octave plus a fifth from the preceding sound.”

    Actually, I thought there were 11 sounds.

    JLW

  2. November 1, 2007 at 11:12 am #

    Thanks, John. I recalled they had a registration here (hence the title of the post) and rely on the likes of you to do the homework! I’ve even updated the opening sentence of the post — thanks.

  3. November 1, 2007 at 1:18 pm #

    “The solution would seem to be an amendment of the relevant statute permitting the use of sound files, which in this day and age should be roughly as accessible as visual files, as trademark specimens.”

    OHIM accepts sound files to be attached to electronic TM filing since July 2005. The application at stake was filed before that. Another Tarzan yell application with sound file was filed afterward.

    I have a post (in French) on my blog on this matter: http://tinyurl.com/2tzhgn

    I noticed that the description of the ululations are far more precise in the US registration than in the CTM application!

  4. November 1, 2007 at 2:13 pm #

    Two excellent points, Frédéric — thank you. As to the first, can you explain (in English?) why this application and appeal proceeded, considering the pending application utilizing the sound file?

  5. November 1, 2007 at 3:49 pm #

    I can shorten the OHIM Tarzan Yell decision as follows :

    can anyone tell what the following graphic stands for ? (see http://img88.imageshack.us/img88/129/tarzan2byellsw1.jpg). Nobody can.
    Trademark refused for lack of of providing a visual representation that is “clear, precise, self-contained, easily accessible, intelligible, durable and objective” (this is the “Sieckmann” test ; see http://tinyurl.com/2upep9)

    But I advise you to read the full Tarzan Yell decision, which was issued in English (lucky you): http://oami.europa.eu/LegalDocs/BoA/2006/en/R0708_2006-4.pdf

    See also both CTM applications filed by Edgar Rice Burroughs, Inc for the Tarzan Yell:
    – CTM n° 003661329 (filed on 11 February 2004) -> refused by above decision
    – CTM n° 005090055 (filed on 22 May 2006) with a sound file (pending)
    (OHIM database can be searched here: http://oami.europa.eu/CTMOnline/RequestManager/fr_SearchBasic_NoReg)

    However for the time being, the OHIM website does not allow to hear sound files (they told me they were hunting some nasty bug).

  6. MarcW
    June 16, 2011 at 6:34 pm #

    Interestingly, IIRC, the distinctive “Tarzan Yell” is not distinctly described – or even referenced – in Burroughs’ books. Tarzan is described merely as making the same “victory cry” that the other male apes do. I think it was Weismuller who first performed it, upon reading “Tarzan yells” in a script.

    *Wiki-fu*

    Yep, more or less as I recall. While of course unlike a copyright or a patent there’s no requirement that a mark originate with the claimant, this seems to really hurt the idea that Tarzan’s yell is associated with *Burroughs* and his goods and services.

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  1. Tarzan’s Yell Not Protectable as a Trademark (at least not in Europe) « The Legal Satyricon - November 1, 2007

    […] Tarzan’s Yell Not Protectable as a Trademark (at least not in Europe) Ron Coleman’s Likelihood of Confusion® reports on “Tarzan’s Yell” failing to cut it as a trademark. Link. […]