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Five Tips on Navigating Sound Trade Marks in NZ

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Unlike ‘traditional’ trade marks, sound marks rely on auditory elements to distinguish and identify goods or services. A sound mark can give your business a genuine edge over your competitors. For example, you may be able to trade mark a jingle or specific auditory element. In which case, you have an exclusive right to the use of this jingle or auditory element. Your competitors would be unable to use this jingle or specific auditory element without infringing on your trade mark. As such, these marks present unique opportunities and challenges for your business. This article will take you through five tips for navigating sound marks in New Zealand.

1. Choose a Distinctive Sound 

Like all trade mark types, you must aim for distinctiveness when selecting a sound for your trade mark. Your sound must be unique enough to both:

  • distinguish your brand from others; and
  • create a strong connection between your good or service and the sound.

When designing or choosing your sound mark, you should consider elements such as the melody and tempo to create a recognisable mark. For example, MGM’s iconic Lion Roar sound mark likely meets both of the above criteria. The sound mark distinguishes MGM from other media companies. Additionally, when viewers hear the roar of a lion, in the context of watching films, they most probably associate this sound with MGM’s brand. 

Importantly, you must avoid using generic or common sounds. This will lack the distinctiveness required for trade mark protection. For example, you should avoid sampling existing music that will already be in use by other brands.

2. Conduct a Thorough Trade Mark Search 

You must conduct a comprehensive trade mark search before settling on your sound mark. This is essential for ensuring its availability for registration. Your search should cover:

Importantly, you should pay particular attention to sound marks in similar industries to identify similarities. This will impact the success of your trade mark application.

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3. Obtain a Clear Representation of the Sound 

When making your application, you must provide a clear and accurate representation of the sound mark to the IPONZ. This representation should capture the sound and ensure it can be consistently reproduced. This may be a musical note or an audio recording, depending on the sound.

4. Make the Most of Your Mark  

You should explore opportunities to incorporate your sound mark into various formats once it has been registered. For example, sound marks may be used on:

  • television; 
  • radio; or
  • videos on your website. 

Adding your mark to various marketing channels can enhance its visibility and help enforce its association with your brand. For example, you could incorporate your sound mark into any promotional videos you release on platforms such as YouTube. 

It is important that your sound mark is used consistently across all different marketing channels. This will ensure that you maintain its distinctiveness and strengthen its trade mark protection.

5. Monitor and Enforce Your Trade Mark Rights 

Registration of your sound mark does not end your responsibilities as a trade mark owner. Once the mark is registered, you must actively monitor the marketplace for any unauthorised use or infringement. 

One way to address this is to develop and implement a strong trade mark monitoring strategy. This strategy should be designed to detect potential misuse of your mark. The strategy should also have a mechanism of how you will take action to enforce your rights.

It is strongly recommended that you consult with a trade mark lawyer when developing a monitoring and enforcement strategy They will be able to provide expert advice on the best approach regarding monitoring and enforcing your trade mark rights.

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Key Takeaways

Sound marks rely on auditory elements to distinguish and identify goods or services. As such, they present unique opportunities and challenges for New Zealand businesses seeking to utilise them. Some key tips for navigating sound trade marks in New Zealand include:

  • choosing a distinctive sound;
  • conducting a thorough trade mark search;
  • obtaining a clear representation of the sound;
  • making the most of your mark; and
  • monitoring and enforcing your trade mark rights.

If you need help navigating sound trade marks, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page

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Emily Young

Emily Young

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