Have you ever heard an advertising song that is associated with the name and creates a unique trademark of a brand such as the song “VINAMILK 100% FRESH MILK” of Vinamilk brand or “You want to buy a TV, go to Dien May Xanh” of Dien May Xanh brand on any media platform? In just a few moments, listeners can easily recognize which brand being promoted. These jingles help consumers identify the goods or services of any business, and they may be classified as a “sound trademark.” But can these songs be protected as sound trademarks? Let’s explore and analyze this question in the following article. 

1. What is a sound trademark? 

A trademark is a sign used to distinguish the goods and services of different organizations or individuals4. Trademarks encompass not only traditional forms but also non-traditional marks, including sound marks, scent marks, and others. In current international practice, non-traditional marks have been recognized. Vietnam officially incorporated non-traditional marks, including sound marks, following its membership in the new-generation Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”). Pursuant to clause 1 Article 72 of the Intellectual Property Law 2005, as amended in 2009, 2020, and 2022, a trademark must satisfy one of the conditions of being a visible sign, such as letters, words, drawings, images, three-dimensional forms, or combinations thereof, presented in one or more colors or as a sound sign represented graphically. Provisions for the protection of sound trademarks were added under the 2022 amended Intellectual Property Law, effective January 14th 2022. 

The current Intellectual Property Law does not define what constitutes a sound trademark. Referring to the definition from the World Intellectual Property Organization (WIPO), a sound mark may include: musical sounds, which may be pre-existing or newly composed for trademark registration purposes, or non-musical sounds found in nature (e.g., animal calls or sounds arising from geographic or meteorological features), or sounds created by human-made devices, machinery, or vehicles. Under §45, 15 U.S.C. 1127 of the Lanham Act, a sound trademark may consist of a single sound or a combination of various types of sounds, such as musical instrument tones, vocal sounds, animal sounds, or sounds emitted by other objects, provided they are distinctive enough for consumers to recognize and differentiate them. 

Based on these definitions, it can be understood that a sound trademark is a sign that identifies the goods or services of a business in the form of sound. 

2. Conditions for appraisal of sound trademarks 

Vietnam’s current legal framework only specifies requirements for trademark applications, specifically that sound trademarks must include both an audio file and a graphic representation of the sound5. According to the Trademark Manual of Examining Procedure (TMEP), sound marks should exhibit characteristics such as (i) arbitrariness, (ii) uniqueness, and (iii) distinctiveness. Sound marks may consist of a sequence of sounds or musical notes, with or without lyrics, or spoken words set to music6. These sound sequences should be distinctive enough for listeners to identify the goods or services they promote. However, it is important to note that these sounds should not be commonplace sounds, such as those of alarm clocks, devices with warning or signaling sounds, phones, or personal alarms. 

According to the EUIPO’s guidelines on sound trademark examination, similar to traditional trademarks, sound trademarks must possess inherent distinctiveness. This means that consumers should be able to recognize the sound as memorable and associate it with goods or services from a specific business, and it must particularly have a certain resonance. Article 15 of the Trademark Examination Guidelines provides examples of sound trademarks that are unlikely to be granted protection without evidence of distinctiveness, including: a. simple musical compositions with only one or two notes; b. sounds in the public domain; c. sounds too lengthy to be considered as geographical identifiers; d. sounds closely associated with specific goods or services. 

In the Berliner Verkehrsbetriebe (BVG) case on March 15, 2023, BVG—a Berlin-based transport company—applied for a sound trademark in the EU under application number 018849003 for Class 39: “transport; passenger transportation; packaging of goods; storage of goods; travel organization.” The trademark registered was a two-second chime. The examiner noted that short jingles are common in the transport sector and that such sounds are used before or after announcements to capture public attention. Furthermore, when numerous familiar sounds are used within a specific field, the sound in question must be sufficiently distinctive to stand out. One of the key factors for sound trademark protection is whether it is distinctive enough to indicate commercial origin. 

From these regulations, we can outline essential criteria for assessing sound marks in Vietnam as follows: 

• The sound trademark must have inherent distinctiveness to be memorable to consumers. 
• The sound trademark must denote commercial origin and be tied to specific goods or services. 
• The sound’s length should be moderate, approximately one to two seconds. 

From the above information, applicants may consider foreign trademark examination requirements as a reference when evaluating the registrability of sound marks in Vietnam. 

See more:

1/ Overview of international trademark registration

2/ Why is it important to perform a trademark search before filing an application?

Disclaimers:

This article is for general information purposes only and is not intended to provide any legal advice for any particular case. The legal provisions referenced in the content are in effect at the time of publication but may have expired at the time you read the content. We therefore advise that you always consult a professional consultant before applying any content.