Recently the Swiss Federal Supreme Court has ruled on the protectability of a pure melody trade mark (decision 4A_566/2008). Previously, the Swiss Federal Institute of Intellectual Property, as well as the Swiss Federal Administrative court, totally had refused protection to the Swiss part of the International Registration No. 858 788 (August Storck KG), which is a pure melody trade mark defined by means of seven notes arranged in staves and complemented by articulation marks. The mark claimed protection in respect of pastries, chocolate and chocolate products.

In ptevious years the Swiss Institute of Intellectual Property has routinely refused protection for pure melody marks (i. e. melodies without a text), but now the Supreme Court held that the mark in question is protectable. The main reasons for the decision were as follows:

1. The consumer may identify a short, self-contained musical theme to be an indication of the origin of goods, i. e. referring to the enterprise producing or offering the goods. This is the case at least if the theme is used in a customary way, such as at the beginning or the end of a TV commercial (E. 2.5.2).

2. It is not required that the consumer is able to reproduce the melody, it is sufficient if the melody can be recognized. This means that short, simple and catchy tunes are better suited to be trade marks than long, complicated or disharmonic ones (E. 2.5.3).

3. There is no reason to treat word and melody trade marks differently when it comes to assessing their protectability, in particular even a melody consisting of a small number of notes may be sufficiently distinct and therefore does not necessarily belong to the public domain. Neither is there a reason to refer to jurisdiction relating to three-dimensional trade marks when assessing melody trade marks as three-dimensional trade marks often consist of the form of the goods itself which is not the case with melody trade marks (E 2.5.4).

4. A melody trade mark may be unproctectable if it is descriptive of the claimed goods (such as the melody of a well-known christmas carol for trimmings). However, a short catchy tune not having any descriptive content for the claimed goods and that has been newly composed will usually be distinctive (E 2.5.5).

5. In the case under consideration the trade mark consisted of a fairly short melody in F sharp-major having seven notes, based on a 6/8 time, starting with the root F sharp and ending with an octave jump. In between, the Fourth, the Third and the Second notes are played and the root is repeated twice. This succession of notes appears as a simple melody to which even untrained ears get easily acquainted and which has no connection with pastries or chocolate.

Source: note by Dr Philipp Rüfenacht (Keller & Partner Patentanwälte AG, Bern).