UNIVERSITY INSTITUTE OF LAW,

PANJAB UNIVERSITY REGIONAL CENTRE, LUDHIANA

BEFORE THE OFFICE OF HARMONIZATION IN THE INTERNAL

MARKET

APPEAL NO. R 708/2006-4

APPELLATE JURISDICTION

Edgar Rice Burroughs Inc . ……………………...…………………………..

……………………APPELLANT

V.

OHIM ……………………………………..…………………….. RESPONDENT

MEMORIAL ON BEHALF OF THE APPELLANT

SUBMITTED TO: Prof. (Dr.) Vaishali Thakur

SUBMITTED BY: Gunika (76)

B.A.LLB 10th Sem

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 TABLE OF CONTENTS

S.NO. TOPIC PAGE

NO.
1. LIST OF ABBREVIATIONS 3

2. INDEX OF AUTHORITIES 4

3. STATEMENT OF JURISDICTION 6

4. STATEMENT OF FACTS 7

5. STATEMENT OF ISSUES 10

6. SUMMARY OF ARGUMENTS 11

7. ARGUMENTS ADVANCED 12

7.1 ISSUE 1 11
1. Whether trademarks can be granted to the ‘Tarzan
Yell’ that has been represented through a sonogram?
1.1. Whether the requirement under Article 4 of CTMR
read with Rule 3 (3) and (6) CTMIR has been
fulfilled or not?

7.2 ISSUE 2 17
2. Whether graphical representation made through a
Sonogram is self- contained, accessible, durable, and
clear?
8 PRAYER 20

9. ANNEXURE 21

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 LIST OF ABBREVIATIONS
S.No. ABBREVIATIONS EXPANSIONS

1.
Art. Article

2.
CTM Community Trade Mark

3.
CTMR Community Trade Mark
Regulation

4.
CTMIR Community Trademark
Implementing Regulation

5.
NO. Number

6. v. Versus

7. Hon’ble Honorable

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 INDEX OF AUTHORITIES

S.No. CASES PAGE NO.

1. Ralf Sieckmann v. Deutsches Patent und Markenamt C-273/00 14

2. HEXAL R 295/2005-4 15

3. ROAR OF LION (SOUND MARK) Case No R 781/1999-4 15

4. Shield Mark BV v. Joost Kist h.o.d.n. Memex 27/11/2003, C-283/01, 17,19

Musical notation, EU:C:2003:641, § 55

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 S.No. STATUTES REFERRED

1. Community Trade Mark Regulations (EC) No 207/2009

2. Community Trademark Implementing Regulation (EC) No 2868/95

S.N ONLINE ARTICLES

o.

1. ikac053.pdf (silverchair.com) Last visited on 24th April, 2024

2. Graphical representation of sound trademarks – past, present and

future - IPRinfo Last visited on 24th April, 2024

3.
Sound Marks: How Sound is the Requirement for Graphical
Representation? (ijlt.in) Last visted on 24th April,2024

4. https://media.bardehle.com/contentdocuments/articles/
Sound_marks_in_
the_European_Union__General_Court_rules_for_the_first_time_on_reg
istration_
of_sound_mark_submitted_in_audio_format___World_Trademark_Revi
ew.pdf Last visited on 24th April, 2024

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 STATEMENT OF JURISDICTION

The appellant humbly submits the memorandum for the appeal filed before this Hon’ble Office
for Harmonization in The Internal Market (Trade Marks and Designs) [OHIM], the Board of
Appeal.

The OHIM, the Board of Appeal is an administrative law body of the Office for Harmonization
in the Internal Market (OHIM), which is responsible for deciding on appeals in trademark and
design matters registered in the European Union.

The appellant invokes the jurisdiction of the Hon’ble Board under Article 58 (1) of the
Community Trademark Regulation (CTMR), which reads as;

Art. 58. Decisions subject to appeal

1. An appeal shall lie from decisions of the examiners, Opposition Divisions, Administration of
Trade Marks and Legal Divisions, and Cancellation Divisions. It shall have a suspensive
effect.1

Further, the appellant is entitled to invoke the jurisdiction of this Board under Article 59 of the
CTMR, which reads as,

Art. 59. Persons entitled to appeal and to be parties to appeal proceedings

Any party to proceedings adversely affected by a decision may appeal. Any other parties to the
proceedings shall be parties to the appeal proceedings as of right.2

1
CTRM RULES
2
Ibdi
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 STATEMENT OF FACTS

1. The Applicant made an application through regular mail on 11 February 2004, and the
Applicant filed a community trademark application. The application was made for a ‘sound
mark’. As a ‘representation of the trade Mark’, the application contained the image that is
marked as exhibit Annexure 1.

2. ‘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 the representations set out below, the upper representation being a plot, over the
time of the yell, of the normalized envelope of the air pressure waveform and the lower
representation being a normalized spectrogram of the yell consisting of a three-dimensional
depiction of the frequency content (colors as shown) versus the frequency (vertical axis) over the
time of the yell (horizontal axis).’

3. On 13 September 2004, the examiner notified the applicant that the trademark application
did not contain a representation of the trademark and that a filing date could not be accorded to
the application. Following Rule 9 (1) of the Implementing Regulation (CTMIR), the applicant
was given two months to remedy this deficiency, failing which the application would not be
treated as a ‘Community trade mark’ application.

4. The appellant replied on 24 September 2004 and stated that it did not understand the
objection as it had in fact filed a color representation of the mark. It filed further observations on
16 January 2006.

5. On 29 March 2006 the examiner gave notice of the closure of the file because the filing
date deficiencies had not been remedied, pursuant to Rule 9(2) CTMIR. The application was not
treated as a ‘Community trade mark’ application and the filing fees would be reimbursed. The
graphical reproduction submitted, namely a spectrogram, associated with a description was not
considered an acceptable graphical representation by the Office. Pursuant to the case-law of the
Court of Justice, such a representation had to be clear, precise, self-contained, easily accessible,
intelligible, durable and objective.

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 CAUSE OF ACTION

Firstly, the Cause of Action arose on 13 September 2004, when it was notified by the examiner
that the application did not contain a representation of the trademark and that a filing date could
not be accorded to the application.

The applicant was given two months to remedy this deficiency, failing which the application
would not be treated as a ‘Community trademark application’.

The appellant replied on 24 September 2004 and stated that it did not understand the objection as
it had filed a color representation of the mark. And, the further observations were filed on 16th
January 2006.

Lastly, on 29 March 2006 the examiner gave notice of the closure of the file because the filing
date deficiencies had not been remedied. The graphical reproduction submitted, namely a
spectrogram, associated with a description was not considered an acceptable graphical
representation by the Office. And the filing fees would be reimbursed.

MATTER BEFORE THE COURT

Aggrieved by the objection raised, the present Appeal was filed before the Harmonization in The
Internal Market (Trade Marks and Designs) [OHIM], the fourth Board of Appeal on 23 May
2006.

GROUNDS FOR APPEAL

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1. The appellant filed a notice of appeal against this notice on 23 May 2006 and a statement
of grounds on 7 July 2006. It requests that the objection be waived, a filing date be accorded and
that the application proceed to examination.

2. The applicant invokes the Board’s decision of 25 August 2003 in Case No R 781/1999-4
(‘Roar of a lion’ (sound mark)), in which it was stated that a Sonogram was an acceptable
graphic representation and submits that its application fulfilled all the criteria laid down in that
Decision. The Representation as filed contains a representation of both time axis and frequency
Axis. It is illustrated by a written description plus a waveform and a Spectrogram (sonogram).

3. It maintains that it is 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?’. The mark applied for
consisted of a description and a representation of the precise nature of the sound that would be
accessible to those with a musical background.

4. Also, in the case of a musical notation, those who cannot read it will have to seek
assistance to understand the mark and a musical tune might be played in various divergent
manners. In that regard, the present case is not different.

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 STATEMENT OF ISSUES

ISSUE 1

1. WHETHER TRADEMARKS CAN BE GRANTED TO THE ‘TARZAN YELL’

THAT HAS BEEN REPRESENTED THROUGH A SONOGRAM?

1.1. WHETHER THE REQUIREMENT UNDER ARTICLE 4 OF CTMR READ

WITH RULE 3 (3) AND (6) CTMIR HAS BEEN FULFILLED OR NOT?

ISSUE 2

2. WHETHER GRAPHICAL REPRESENTATION MADE THROUGH SONOGRAM IS

CLEAR, SELF-CONTAINED, ACCESSIBLE AND INTELLIGIBLE?

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 SUMMARY OF ARGUMENTS

ISSUE 1: WHETHER TRADEMARKS CAN BE GRANTED TO THE ‘TARZAN YELL’

THAT HAS BEEN REPRESENTED THROUGH A SONOGRAM?

1.1 WHETHER THE REQUIREMENT UNDER ARTICLE 4 OF CTMR READ WITH

RULE 3 (3) AND (6) CTMIR HAS BEEN FULFILLED OR NOT?

It is humbly submitted before this Hon’ble Court that the requirements mentioned under Rule
3(3) of CTMIR and Article 4 of CTMR are complied with. A trademark may consist of a sign
which is not in itself capable of being perceived visually, provided that it can be represented
graphically, particularly by means of images, lines or characters . In the present case sound mark
(Tarzan yell) produced through the sonogram was graphically represented and it is capable of
being registered as trademark.

ISSUE 2: 2. WHETHER GRAPHICAL REPRESENTATION MADE THROUGH

SONOGRAM IS CLEAR, SELF-CONTAINED, ACCESSIBLE AND CLEAR AND
DURABLE?

It is humbly submitted before this Hon’ble Court that the graphical representation made through
sonogram is self contained, accessible and intangible. It means that third parties viewing the
mark should on their own be able to reproduce the sound or at least have the journal idea of the
same and it is unlikely that anybody even a superior specialist could on the basis of sonogram
alone and without technical means reproduce the sound.

The representation is easily accessible. The image does make it possible for a competitor to
transform the image into a sound through technical means.

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 ARGUMENTS ADVANCED

ISSUE 1: WHETHER TRADEMARKS CAN BE GRANTED TO THE ‘TARZAN YELL’

THAT HAS BEEN REPRESENTED THROUGH A SONOGRAM?

1.1. WHETHER THE REQUIREMENT UNDER ARTICLE 4 OF CTMR READ

WITH RULE 3 (3) AND (6) CTMIR HAS BEEN FULFILLED OR NOT?

It is humbly submitted before this Hon’ble Court that Trade mark should be granted for the
Tarzan yell that has been graphically represented through Sonogram.

That all the requirements enunciated under Article 4 of CTMR and Rules 3 (3) and (6) of
CTMIR have been fulfilled. These provisions are mentioned below:

ACCORDING TO ARTICLE 4 OF CTMR:

4. SIGNS OF WHICH A COMMUNITY TRADEMARK MAY EXIST:

A Community trademark may consist of any signs capable of being represented graphically,
particularly words, including personal names, designs, letters, numerals, and the shape of goods
or of their packaging, provided that such signs are capable of distinguishing the goods or
services of one undertaking from those of other undertakings.

ACCORDING TO RULE 3(3) OF CTMIR

3. REPRESENTATION OF MARK
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2. (1) If the applicant does not wish to claim any special graphic feature or color, the mark
shall be reproduced in normal script, as for example, by typing the letters, numerals and
signs in the application. The use of small letters and capital letters shall be permitted and
shall be followed accordingly in publications of the mark and in the registration by the
Office.
3. (2) In cases other than those referred to in paragraph 1 and save where the application is
filed by electronic means, the mark shall be reproduced on a sheet of paper separate from
the sheet on which the text of the application appears. The sheet on which the mark is
reproduced shall not exceed DIN A4 size (29, 7 cm high, 21 cm wide) and the space used for
the reproduction (type-area) shall not be larger than 26,2 cm x 17 cm. A margin of at least
2,5 cm shall be left on the left-hand side. Where it is not obvious, the correct position of the
mark shall be indicated by adding the word ‘top’ to each reproduction. The reproduction of
the mark shall be of such quality as to enable it to be reduced or enlarged to a size not more
than 8 cm wide by 16 cm high8 for publication in the Community Trade Mark Bulletin.
4. (3) In cases to which paragraph 2 applies, the application shall contain an indication to
that effect. The application may contain a description of the mark.

The present sonogram so filed in the application also contains the description of the sound mark
which runs as,

‘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 the representations set out below, the upper representation being a plot, over the
time of the yell, of the normalized envelope of the air pressure waveform and the lower
representation being a normalized spectrogram of the yell consisting of a three-dimensional
depiction of the frequency content (colors as shown) versus the frequency (vertical axis) over the
time of the yell (horizontal axis).’

Further, ACCORDING TO RULE 3(6) OF CTMIR

Rule. 3. Representation of the mark:

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 (6) Where registration of a sound mark is applied for, the representation of the trademark
shall consist of a graphical representation of the sound, in particular, a musical notation;
where the application is filed through electronic means, it may be accompanied by an
electronic file containing the sound. The President of the Office shall determine the formats
and maximum size of the electronic file.

FUNDAMENTAL REQUIREMENT FOR TRADEMARK

Graphical representation requirement is an essential requirement for the registration of any kind
of trademark. This requirement – i.e. the definition that a trademark “may consist of any signs
capable of being represented graphically” In the present case, the Tarzan yell was graphically
represented that can be shown from Annexure 1.

CASE: Ralf Sieckmann v. Deutsches Patent und Markenamt3

According to the Court’s decision in Sieckmann’s case the graphic representation “must enable
the sign to be represented visually, particularly by means of images, lines or characters, so that it
can be precisely identified.”

The graphical representation of the requirement of Article 4 CTMR AND Rule 3(6) has been
fulfilled because the sign is capable of being represented graphically by the provided
spectrogram.

A ‘graphical representation’ is a form of visually displaying data through various methods like
graphs, diagrams, charts, and plots. It helps in sorting, visualizing, and presenting data through
different types of graphs.

According to the Collins Dictionary,

‘A graphical representation of something uses graphs or similar images to represent statistics or

figures.’

Similarly, the graphical representation of sound is done through a sonogram. An audio sonogram
is a two-dimensional graphical representation of an audio source.

3
C-273/00 https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=ecli:ECLI:EU:C:2002:748
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 A sonogram is a visual representation of a sound showing pitch on the y-axis and time on the x-
axis.

Sonograms are created using a principle, called Fourier Analysis, which states that complex
phenomena like sounds, other physical phenomena, or even equations, can be more easily
understood when they are broken down into smaller pieces. To make it possible to “see” a sound,
a Fourier analysis is made of the audio, and the resulting information is converted into a
graphical form.

The sonogram has become the standard way to illustrate a song and has enabled researchers to
dissect the elements of individual songs in much greater detail than otherwise possible.

The ‘Yell of Tarzan’ has been represented through the sonogram, wherein the X-axis represents
the time in seconds and the Y-axis represents the frequency in hertz. The sonographic
representation also shows the pressure applied and is accompanied by the description of the
sonogram.

CASE: (HEXAL)4

In 2005 OHIM Board of Appeal decision allowed for the registration of a sound mark (‘Hexal’)
represented by a black-and-white sonogram completed by a spoken text and complemented with
a description. In this case Sonogram was accepted as an adequate graphical representation of a
slogan in spoken language.

CASE: ‘ROAR OF LION’ (sound mark)5 25 August 2003

In this case, it was stated that a sonogram was an acceptable graphic representation and submits
that its application fulfilled all the criteria laid down in that Decision. The representation as filed
contains a representation of both time axis and frequency axis. It is illustrated by a written
description plus a waveform and a spectrogram (sonogram).

4
R 295/2005-4
5
Case No R 781/1999-4
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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?’.

The mark applied for consisted of a description and a representation of the precise nature of the
sound that would be accessible to those with a musical background.

The applicant has licensed the Tarzan yell sound to enterprises such as Nokia as a ring-tone on
mobile phones and Disney for motion pictures. That illustrates the recognition of the mark and
its exclusive association with the applicant.

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ISSUE 2: WHETHER GRAPHICAL REPRESENTATION MADE THROUGH
SONOGRAM IS SELF-CONTAINED, ACCESSIBLE, CLEAR AND DURABLE?

It is humbly submitted before this Hon’ble Court that according to the judgment of Shield Mark
BV v. Joost Kist h.o.d.n. Memex 6, a sound must be represented graphically ‘particularly by
means of images, lines or characters and its representation must be ‘clear, precise, self-contained,
easily accessible, durable and objective’.

It is humbly submitted before this Hon’ble Court that graphical representation of ‘Tarzan Yell’
which has been reproduced through sonogram is clear, precise, self-contained, easily accessible
and durable.

DICTIONARY MEANING OF THE TERM ‘SELF-CONTAINED’

According to Britannica,7

‘Self-contained is not requiring help or support from anyone or anything else: complete by itself’

It is contended before this court that a sonogram as produced by the applicant fulfills the criteria
to be self-contained with regards to the function of CTM Register as a Public register, the notion
of self-contained means that the CTM Bulletin should on their own and without additional
technical means be able to reproduce the sound or at least to have a general idea of
what the sound is.

In the present case, as depicted in the Annexure-I, the sonogram clearly reflects that the color bar
on the right-hand side of the sonogram indicates how the colors represent loudness.

6
27/11/2003, C-283/01, Musical notation, EU:C:2003:641, § 55
7
https://www.britannica.com/dictionary/self%E2%80%93contained#:~:text=Britannica%20Dictionary%20definition
%20of%20SELF,anything%20else%20%3A%20complete%20by%20itself
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 Looking at the sonogram, various frequencies, e.g. around 3000, 2000 and 1000 Hertz, a
stronger pressure (louder sound) it is clearly visible and understandable which makes it possible
to deduce from the image as filed at what exact frequencies the required pressure is to be applied
and thereby making it easy to convert the sonographic image into sound.

DICTIONARY MEANING OF ACCESSIBLE

According to the Cambridge dictionary,

Accessible means easy to understand

That the representation is easily accessible. The CTM Register is directed at third parties who
want to ascertain whether the signs they want to use for their own goods or services can
reasonably fall into the scope of protection of the registered mark, which presupposes that in the
first place they can ascertain what the subject-matter of the registered mark is.

For that to take place, a competitor should be able to transform the image into a sound, at least in
his brain for himself, or otherwise by transforming it into a sound through technical means.

That will be possible on the basis of the image as filed. It is enough that the image filed would
unambiguously and individually represent a given sound, as long as it is possible to retransform
the image into a sound.

The requirement of being easily accessible means that the representation as filed has to be seen
from the standpoint of the reader of the CTM Bulletin who asks himself ‘what does that image
represent?’, and not from the standpoint of the creator of the image who asks himself ‘was that
image derived from the sound?’

DICTIONARY MEANING OF ‘CLEAR’

According to the Collins dictionary,8

‘Something that is clear is easy to understand, see, or hear.’

8
https://www.collinsdictionary.com/dictionary/english/clear
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It is contended that the ‘Tarzan Yell’ which is known to most people is easily recognizable and it
would render a verbal reference to that yell a clear and unambiguous representation of the yell
itself.

DICTIONARY MEANING OF ‘DURABLE’

According to Merriam- Webster dictionary,

‘Durable means something that is able to exist for a long time without significant deterioration
in quality or value’

It is contended that sonograms are considered to be the best way of representation of the sound
which can be protected and preserved for a long time period.

It is humbly submitted before this Hon’ble court that the application filed by the appellant fulfills
all the criteria as enunciated in the case Shield Mark BV v. Joost Kist h.o.d.n. Memex9.

The sonogram of the ‘Tarzan Yell’ is ‘clear, precise, self-contained, easily accessible, durable and
objective’ in nature and the Community Trademark should be granted to the applicant.

9
Supra note no. 06
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 PRAYER

Wherefore, may it please the Hon’ble Court, in the light of facts and circumstances of the case,
issues raised, arguments advanced and authorities cited, the Appellant prays that this Hon’ble
Court may be pleased to adjudge, rule upon, and determine the following:

 That the Hon’ble Court be pleased to order that all the objections raised by the examiner
would be waived off.
 That the Graphical Representation of Tarzan Yell produced through Sonogram would be
registered as Trademark .
 That filing date be accorded to the Appellant and application be proceeded for further
Registration

AND/OR

Pass any other order it may deem fit in the interest of Justice, Equity, and Good Conscience.

All of which is most respectfully prayed and humbly submitted.

(Signed)

Date: Counsel for Appellant

Place:

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 ANNEXURE

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 ANNEXURE- I

This Annexure represents the Sonogram attached by the Appellant before the examiner to be
trademarked.

Herein,
The X-axis represents Time in seconds and,
The Y-axis represents Frequency in Hertz.

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