Distinctive character. Music to your ears - not!
11 November 2016
In this case the General Court (GC) confirmed that sound marks need to be in tune with distinctive character to achieve registration.
Globo Comunicação e Participações S/A (Globo) applied to register the sound mark (shown below) initially for goods and services in classes 9, 16, 38 and 41. The specification was later limited and covered "DVDs and other digital recording media; computer software; applications for tablets and smartphones" in class 9, "television broadcasting services" in class 38 and a range of educational and entertainment and television programmes in class 41.
The sound mark was refused registration by the European Intellectual Property Office (EUIPO) under Article 7(1)(b) of the EUTMR because it consisted of a simple banal ringing sound that could not be perceived as an indication of commercial origin.
The objection was maintained by the Board of Appeal who agreed, saying that:
the mark applied for consisted of the repetition of a sound that resembled a ringtone which was banal in every respect, notwithstanding the fact that the mark consisted of a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G sharps
It went on to say that the trade mark was "a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound which would generally go unnoticed and would not be remembered by the target consumer".
The GC agreed and said that a sound mark must have "a certain resonance which enables the target consumer to perceive and regard it as a trade mark and not as a functional element or an indicator without inherent characteristics". Overall, the trade mark was considered excessively simplistic and no more than a simple repetition of two identical notes, unable to function as a trade mark unless it had acquired distinctiveness through use.
The EUIPO, the Board of Appeal and GC were harmonious in their decisions that the trade mark was off key in terms of its registrability.
Case details at a glance
UnionDecision level: General Court
Parties: Globo Comunicação e Participações S/A (applicant) v EUIPO (defendant)
Date: 13 September 2016