http://ipkitten.blogspot.com/2024/07/revving-halt-euipo-upholds-refusal-to.html
By decision of
20 June 2024 (R 1900/2023, original German version here and English machine translation here), the Board of Appeal (BoA) of EUIPO confirmed the initial refusal (see
The IPKat here) to register a sound mark consisting of an accelerating engine noise. The
BOA confirmed the lack of distinctive character because the requested sound
sequence represents a characteristic typical of electric vehicles, namely the
acceleration or improvement of their performance until they reach the desired
travelling speed.
Background
On 18 September
2019, Dr. Ing. h.c. F. Porsche Aktiengesellschaft (“the applicant”) filed application
no. 018795489 to register a sound mark consisting of 16 seconds evoking the acceleration of an engine for
automotive-related products and services (classes 9, 12, 28 and 41). On 25
August 2023 the examiner issued a decision of total refusal of the trade mark applied for pursuant to Article 7(1)(b) EUTMR.
The applicant appealed on the following main arguments:
a) the sound sequence applied for is memorable and capable of serving as
an indication of commercial origin as it evokes strong emotions and ideas;
b) the sound sequence applied for is not noises, which are naturally
produced by the goods applied for or in the rendering of the services, but
rather a sound sequence specifically comprised as a trade mark and created
artificially;
c) it is not a requirement for distinctive character for the targeted
public to recognise the precise sound sequence upon hearing again;
d) the sound sequence applied for has nothing to do with the sound of an
internal combustion engine;
g) the public is
accustomed to the use of sounds as a trade mark for electrical vehicles
and will therefore perceive the trade mark applied for from the outset as an
artificially created sound for imparting identity.
The decision
The BoA dismissed the appeal and confirmed the refusal of the
application on the ground of lack of distinctiveness pursuant to Article 7(1)(b) EUTMR.
As it was also discussed
in detail a short while ago on The IPKat, in the case of sound marks,
it is necessary for them to have a certain resonance, by means of which the
targeted consumer can recognise it and interpret it as a trade mark and not
merely as a functional component or as an indicator without any intrinsic
characteristics. To be registered as a trade mark, the targeted consumer must
understand a sound sign as an identification of the commercial origin of the
goods/services (T-408/15 and T-668/19).
As regards to the relevant public, the goods and services in classes 9,
12, 28 and 41 target both the general public and specialists. Therefore, the
level of attention will be average to above average. Nevertheless, the level of
attention paid by the relevant public cannot have a decisive influence on the
legal criteria used to assess whether a sign is descriptive or devoid of
distinctive character (T-26/20 and T-423/18).
The sign applied for is a sound of a total of 16 seconds, even though
the first four seconds are phoneless, followed by an electronically generated,
intensified barrel-reinforcing sound sequence, with the last three seconds in
turn being practically meaningless. Accordingly, the BoA concluded that the
statements made in the contested decision must be agreed with in that the sound
sign applied for depicts the effect of accelerating or increased performance. The relevant
public will at most assume that the sound refers to the aspect of
acceleration or increase in performance of the vehicles and cars, which is why
the sign is devoid of distinctive character.
Comment
The automotive industry has long incorporated sound effect systems in hybrid
and electric cars to produce an artificial vehicle noise. The reason was
originally to ensure pedestrian safety. For example, when driving a hybrid or electric
cars, drivers tend to accelerate without realising it because the sound
produced by the engines of these vehicles often does not match the expected “roar”
of a conventional internal combustion engine. The reasons for this tendency in
the electric vehicle (EV) market are also to improve the “e-sound” of electric
or hybrid vehicles. More precisely, this “e-sound” is reproduced through a
loudspeaker in the underbody of the vehicle, so that it can be heard by the
driver and nearby pedestrians.
Porsche is the most recent automotive company to have its application to
register a vehicle sound mark rejected at the EUIPO due to lack of
distinctiveness, despite the sound being registered as a trade mark in Germany.
Back in in February 2023 the Italian manufacturer of luxury cars Lamborghini
filed an application for an EU mark for the sound of an electric vehicle which was also refused by decision of examiner of 1st September 2023.
The major question surrounding this trend of rejections is how distinctive
the sounds need to be to meet the relevant threshold. The creativity of
electric vehicle engine sounds will be somewhat constrained by legislation and
brand image, raising the question of how manufacturers will create engine
sounds that consumers can recognize. In addition and in any event, it should be
recalled that, in principle, these “e-sounds” may acquire a “secondary meaning”
that could make the sound eligible for sound mark protection once consumers
associate the sound with a particular manufacturer.
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