By: Melinda Upton, Nicholas Boyle, Jessie Buchan, Lucy Meadley and Valiant Warzecha

Businesses are constantly looking for an extra dimension that will allow their brand to cut through the saturation of the modern world. Increasingly, corporate re-brands or brand refreshes are including bespoke musical themes known as ‘sound identities’ or ‘audio brands’ to create a further aural association with the product or service offering.

As a medium that is inherently evocative, these ‘sound identities’ are intended to distill the company’s core values into music and often involve the creation of variations of this identity to reflect different aspects of the business’ operations. They can be widely used to reinforce visual elements on websites, mobile applications and even directly as hold music or in radio advertisements.

This element of branding is not a new phenomenon and there are numerous examples where consistent use of a ‘sound identity’ has been highly effective for brand awareness. Accordingly, like any brand name or aspect of a visual identity, businesses should consider appropriate protection for IP associated with these ‘sound identities’.

Trade Mark Protection

The most obvious form of protection is registering a trade mark, which will allow the business to prevent others traders from using the ‘sound identity’ with respect to specific goods and/or services.

Under Australian law, to receive registered protection as a sound mark, the application must:

  • meet formality requirements for precisely representing / describing the sound mark, including a graphic representation e.g. musical notation, and a concise and accurate description of the mark; and
  • satisfy registrability requirements, namely:
    • be capable of distinguishing the relevant goods and services, and not be a sound that is purely ‘functional’ or ‘common to the trade’, such that other traders would want to be able to use the sound; and
    • not be deceptively similar or substantially identical to existing registrations that protect the same or similar goods and services.

When protecting a ‘sound identity’, businesses should consider the following:

  • to minimise issues with registration, any design brief should specify that sounds related to the business’ offering must be adequately transformed from their ‘functional’ or ‘common’ form. Similarly, during development, ‘sound identities’ should be reviewed to ensure that they are not deceptively similar or substantially identical to previous registrations;
  • if they are wedded to a ‘functional’ or ‘common’ sound, they should be prepared to file evidence of use that demonstrates that the mark is capable of distinguishing the relevant goods and services;
  • registration of the most basic variation of the ‘sound identity’ will ensure the broadest possible coverage. However, this should be balanced with protecting the identity’s core variation as the mark must be used in its registered form or otherwise risk becoming vulnerable to removal from the Trade Mark Register for non-use; and
  • defensive trade marks may be filed to prevent ‘sound identities’ from being misused for goods and services that are unrelated to the business’ core offering.

Copyright Protection

A ‘sound identity’ will also attract copyright protection.

Under Australian law, provided that the ‘sound identity’ demonstrates originality and is the product of the creator’s skill and effort, it will receive automatic protection as a:

  • ‘musical work’ for the underlying composition; and
  • ‘sound recording’ for the recorded performance of the composition. Notably, any variations of the ‘sound identity’ would be individually protected by this category.

Ownership of the ‘Sound Identity’

As with any other marketing collateral, businesses should ensure that they own the rights, or have proper permission, to use the ‘sound identity’ and any variations by way of a license or assignment from the composers and/or performers.

Further, this ownership or permission should be obtained prior to use and include a moral rights consent that allows for use without attribution of the creator and permission to edit and/or remix the work.

For further information or assistance with matters relating to protecting ‘sound identities’, corporate re-branding or transfer of IP rights in Australia, please contact Melinda Upton, Nicholas Boyle, Jessie Buchan, Lucy Meadley and Valiant Warzecha.