EU General Court Notes Short Jingle is a Trade Mark

Sounds good: the EU General Court has recently made a notable determination when it considered the distinctiveness of a trade mark application for a short jingle. Although historically sounds have not been regularly registered as trade marks in the EU, this most recent update suggests short and simple sounds are capable of protection. Our Intellectual Property team examines the likely impact of this latest development.

The General Court of the EU has recently held that a two second, four note jingle is capable of trade mark protection. In reaching its decision, the General Court overturned the EUIPO Board of Appeal’s previous decision which had originally rejected the EU trade mark application on the basis that it lacked distinctiveness. The overturned decision suggests a potentially lower bar in the EU to register sounds as trade marks than has historically been the case. We review the decision and the key takeaways for brand owners.

Background

The Berlin Transport Company, Berliner Verkehrsbetriebe (BVG), filed an EU trade mark (EUTM) application in March 2023 for the following sound which can be heard here.

The mark was applied for the following Class 39 services: “transportation, passenger transport, packaging of goods, storage of goods and organisation of trips.”

The EUIPO initially refused registration on the basis that the mark lacked distinctive character. BVG appealed and the Board of Appeal upheld the refusal. The Board of Appeal took the view that the sound applied for was too short and banal. On that basis, it took the view that it had no resonance or ability to be recognised by consumers as an indication of the commercial origin of the services which it covered. BVG appealed to the General Court of the EU.

EU General Court decision

The General Court noted at the outset that the criteria for assessing the distinctiveness of sound marks are the same as all other categories of trade marks.

It also noted that it is apparent from the case law that in order to be protected, it is necessary for the sound to have a certain resonance. That resonance enables the target consumer to perceive and regard it as a trade mark and not as a functional element or an indicator without any inherent characteristics.

The Court agreed with BVG that the following factors all indicated that the mark applied for had characteristics that suggested the existence of distinctive character:

• It is well known that operators in the transport sector increasingly use short sound patterns to create a sound which is recognisable by the public. These sound marks can also introduce or accompany messages addressed to the target public for advertising purposes, or in connection with associated services. These are often encountered in airport terminals or on train platforms or bus stations.
• The sound at issue is a melody in which four different perceptible sounds follow each other. It does not have a direct link with the services covered by the mark and is not dictated by technical or functional considerations. Similarly, it is not already known to the public, which gives rise to the presumption that it is an original work.

The Board of Appeal therefore made an error of assessment in finding that it lacked distinctive character on the basis that it was “extremely short (two seconds) and simple (four perceptible sounds).”

• The Board of Appeal made a further error in finding that the sound applied for had “a merely functional role.”

Ultimately, the Court held that the Board of Appeal did not correctly assess the distinctive character of the mark applied for and annulled the Board of Appeal decision.

Comment

Sound marks are not very common in the EU, and these applications often face objections from trade mark offices on the basis of a lack of distinctiveness. This General Court decision therefore suggests a lower bar to register short and simple sounds as EUTMs. The decision also suggests that the sector in which the sound will be used is integral, as the General Court took into account the customs of the transport sector in this case. The decision may consequently now open the flood gates to sound mark applications in the EU. For brands that use short and simple sounds as a component of advertising or otherwise, trade mark protection is available and should be considered to combat against unauthorised use by opportunistic third parties and copycats. Other companies, including Mastercard, Google, The Football Association Premier League Limited, UEFA and Warner Bros have all equally successfully registered their short sounds as trade marks in the EU.

For more information and expert legal advice on how best to protect your IP rights, please contact a member of our award-winning Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.

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