What has happened?
- The EU General Court has ruled that a two-second (4-note) jingle from Berlin's public transport company could be registered as a trade mark in class 39 (transport), overturning the EUIPO Board of Appeal's rejection.
- We know from previous case law that the criteria for assessing the registrability (distinctiveness) of sound marks is no different from any other type of mark. In particular, the requirement that the mark "differs from the norms and customs of the sector" which applies to shape marks does not apply to sound marks.
- Nonetheless, a number of applications for sound marks have been rejected on the basis that they lack distinctiveness. This decision seems to turn the tide and suggests that even relatively basic and short sounds are potentially registrable.
- The fact that the sound also performed a function (to get the attention of passengers) did not mean that it could not also act as a trade mark. This might be surprising to some in the UK – public transport jingles here will almost certainly be perceived as functional only and not indicating trade origin. Perhaps those on the continent have been educated to view such jingles as indicating trade origin (despite also being functional).
- Note that an objection based on the fact that the mark exclusively achieves a technical result was not raised in this particular case. This is because such an objection only applies where the mark applied for covers goods. It does not apply to services. In other words, there is more leeway to register sounds for services than goods (where the sound arguably also achieves a technical function).
Want to know more?
The Board of Appeal decision
In the previous ruling (under appeal), the Board of Appeal of the EUIPO had held that sound marks must have a certain resonance which allows them to be perceived as trade marks. It also held that the jingle in question – from the Berlin transport system - did not have such resonance and so was not registrable.
More specifically, it held that the sound mark was "extremely short (two seconds) and simple (… four perceptible sounds)". The fact that jingles are common on public transport was relevant to the rejection, as was the fact that jingles are used to get customers' attention (as opposed to indicating trade origin).
This was consistent with the General Court ruling in Sound Mark (T 408/15), where a sound characterised by simplicity and no more than the mere repetition of two identical notes (ie a sound akin to a telephone ringtone) was not capable of being a trade mark.
General Court decision
On appeal, the General Court held that sound marks are assessed in the same way as all other marks and only a minimum degree of distinctiveness is required. Here, the particular jingle was registrable because:
- It is short, which enables it to be remembered.
- Jingles' like this are recognisable by the transport sector's public (ie on platforms or in airports) as being an audio equivalent of visual identity.
- The sound itself has four different perceptible sounds (one after the other) and is not directly linked to using transport services (in the way that the sound of an aircraft or passing train would be) - its purpose is like a jingle.
- A sound itself can be both functional and distinctive (for trade mark purposes).
What does this mean for you?
- Assuming it is not an anomaly, the decision arguably lowers the bar for the registrability of sound marks. That could be (partly) a policy decision.
- The customs of the sector in question are relevant. Effectively, the court was of the view that the average consumer views transport jingles as indicative of trade origin. That will be somewhat surprising to UK consumers who (unless we are missing something) is unlikely to view them as such. It could be that practice in the EU is different with different jingles being known and understood by consumers as indicating different train operators.
- Leaving aside the question of whether this mark would be viewed as indicating trade origin, the case suggests that "short and striking" sounds could be memorable enough for registration as EUTMs.
- The case also brings home a slight anomaly in the absolute grounds for objection provisions – the provisions prohibiting the registration of signs which consist exclusively of the shape or other characteristics necessary to obtain a technical result (and the other related provisions) only apply to goods. It means there is slightly more leeway to register sounds covering services than goods (where the sound also has a functional element).
- For those who use sounds as brands in their business in the EU, now might be a good time to file an EUTM application to try to protect them.
