http://ipkitten.blogspot.com/2023/11/short-jingle-not-protectable-as-sound.html
The case law on sound marks is still developing in the EU. There has been a series of applications that have been rejected, including the sound of an accelerating electric car (discussed here), the opening and pouring of a can (discussed here) and a nursery rhyme (discussed here). In a recent decision, the EUIPO added a jingle of a public transportation company to this list.
Background
On 15 March 2023, Berliner Verkehrsbetriebe (‘BVG’, the company operating the public transportation system in Berlin), applied for a two-second long sound mark as an EU trade mark (no. 018849003; you can listen to the sound file here). Registration was sought for ‘transportation; passenger transport; packaging of goods; storage of goods; organization of trips’ in class 39:
The examiner objected to the application and argued that it lacked distinctiveness (Art. 7(1)(b) EUTMR):
The general public is used to word and figurative signs indicating the commercial origin of goods and services but the same does not apply to sounds, especially when it comes to a very simple sound sequence. Without graphic or verbal elements, consumers do not usually infer the origin of goods or services on the basis of a sound.
The examiner referred to case law of the General Court requiring a sound mark to have a certain resonance, which enables the relevant consumer to perceive and regard it as a trade mark and not as a functional element or as an indicator without any inherent characteristics. The sound must be identifiable as a trade mark (T-408/15 at para. 45). Extremely short and banal sounds on the one hand, and entire songs or even symphony movements on the other are unlikely to be registerable (cf. R87/2014-5 at para. 27).
The sign applied for consists of a banal melody that only lasts two seconds. Consumers will not be able to remember it because the melody is too short, not sufficiently memorable and also quite monotonous. The relevant public will not regard the jingle as an indication of the commercial origin of the services.
BVG responded and argued:
1. The sound is played by several voices at the same time and is sufficiently complex. It has 18 different pitches.
2. The sign has the artificial sound of a bell, which is not used by any other local or long-distance passenger transport company. It also reflects the cosmopolitan nature of the city of Berlin.
3. The sound is memorable, which is supported by the registration of EU trade marks nos. 018800487 and 017396102.
The EUIPO’s decision
The examiner rejected the application for lacking distinctiveness.
Regarding BVG’s first argument, the examiner found that jingles are common in the transport sector. They precede or end announcements and are meant to increase the attention of the public. Further, the more sounds are used in a given sector, the more the application is required to stand out from them. BVG’s sound was deemed not sufficiently complex and ‘catchy’.
The examiner countered BVG’s second argument by holding that it is irrelevant whether the sound has been used previously or not. The only decisive question is whether it is apt to indicate commercial origin.
BVG’s reference to previous sound mark registrations was dismissed because the EUIPO is not bound by prior decisions on the registration of other signs.
Comment
The General Court held that the case law on three dimensional trade marks cannot be applied to sound marks (T-668/19 at paras. 29 et seqq.), i.e. the sound does not have to deviate significantly from the norms or customs in the relevant sector. However, the norms or customs can nevertheless play a significant role. In some sectors, it is common to use sounds and jingles in particular to identify commercial origin. This applies for instance to television broadcasting services (T-408/15 at para. 43). In such sectors, it will be more likely that a sound mark is accepted as inherently distinctive. In other sectors it will be challenging to establish that a simple jingle is inherently distinctive because sounds are used for other purposes, such as attracting the attention of customers. Nevertheless, even in those sectors jingles can be found to be distinctive, as the registration of a sound mark for the company operating the Munich airport shows (accessible here).
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