How long is too long? The James Bond theme

In light of the release of the latest movie in the series, Merpel wonders whether the James Bond theme is too long to be registered as a sound mark. This question was addressed in a decision issued early this year by the Fifth Board of Appeal (BoA) of the European Union Intellectual Property Office (EUIPO).

Background

On 19 December 2019, Danjaq LLC filed the EU trademark (EUTM) application 018168977 in classes 3, 9, 14, 16, 18, 21, 25, 28, 32, 33 and 34, covering inter alia perfumery; cleaning preparations; electronic comic books and comic strips; audio books; computer games; cinematographic films; jewellery; wrist watches; books; wallets; household or kitchen utensils; glassware; clothing; video game apparatus; toy action figures; fruit beverages; alcoholic beverages; and tobacco.

The sign, lasting for 25 seconds, consists of three musical parts: “it begins with the characteristic trumpet fanfare (seconds 1-5) which catches the listeners attention immediately, then a kind of dangerous and lingering ‘creeping up’ sequence follows (seconds 6-11) and leads to the core part, the famous, loud, fast and strong guitar solo (seconds 12-25)”. Listen here to the sound.

On 25 September 2020, the EUTM application was refused under Article 7(1)(b) of Regulation 2017/1001 (EUTMR) on the ground that the sign cannot function as a trademark and would not be perceived by consumers as a badge of origin. The decision was based inter alia on the following findings:

• The length of the sound mark (too long). It was found that the three musical parts of the sign made it more dramatic but “less memorable”, with the result that it will not be immediately perceived as an indication of origin by consumers.
• The CP11 Common Practice (referred by the applicant) could not apply because the discussions had not been concluded at that time. [The CP11, developed under the EUIPO’s European Cooperation Projects, was published in April 2021 and refers to the examination of formal requirements and grounds for refusal of new types of trademarks: sound, motion, multimedia, and hologram marks].
• Contrary to that asserted by the applicant, it was not proved that a significant number of goods were commercialized as “movie merchandise”, such as cleaning preparations (class 3), household utensils (class 21), alcoholic beverages (class 32) or tobacco (class 34), which led to the conclusion that those goods did not have any link with the entertainment sector or movies. Thus, it was found that despite that the sign “might be memorable among film enthusiasts”, it would not be perceived as an indication of the commercial origin of the claimed goods.

The appeal

Danjaq appealed the decision, submitting the statement of grounds on 19 January 2021. It was argued inter alia that the sound mark at issue was distinctive for all the claimed goods, which are typical merchandise goods.

The applicant also claimed that the contested decision did not provide support for the conclusion that the sign lasting 25 seconds was too long “to be distinctive and memorizable”, pointing out that the EUTMR and the EUIPO Guidelines (see the 2020 and 2021 editions) do not establish a maximum length for sound marks. Furthermore, despite that the Guidelines (Part B, Section 4, Chapter 3, No. 14) state that it is unlikely that “sounds that are too long to be considered as an indication of origin” are accepted without evidence of factual distinctiveness, it does not define what is too long.

Danjaq further referred to the third draft of the CP11 (released in June 2020) that observed that “as sounds are increasingly being used in trade as part of a branding strategy, consumers are also more likely to perceive them as indications of commercial origin”. [The quoted wording is included in the final version of the CP11].

In addition, the applicant maintained that for the analysis of the consumer perception, the CP11 groups sound marks in the following categories: 1) sounds produced by or connected to the goods or services; 2) notes, combination of notes, tunes or melodies; and 3) sounds which are the audible equivalent of verbal elements. [The categories are also included in the final version of the CP11].

The applicant argued that the sign at issue fell under the second category because it is “a sequence of notes and thus, a melody or tune … [.] It has no direct relation to the goods and thus, there is no reason which would make it difficult to perceive the sound mark as badge of commercial origin … [and in consequence, n]o higher threshold is justified in the context of Article 7(1)(b) EUTMR”.

The BoA’s decision

In its decision of 12 March 2021 in R 1996/2020-5, THE SOUND OF THE THEME OF THE JAMES BOND MOVIE, the BoA stated that the sound mark at issue contains a melody and has a resonance. It was also noted that the appealed decision lacked reasoning within the meaning of Article 94(1) EUTMR. This was so because no reasons were provided supporting the conclusion that the sign is devoid of distinctive character for the claimed goods, other than to merely conclude that it “was too long to be easily and instantly memorised as an indication of origin”.

The BoA stated that “there can be no stricter rules applied as regards the length of sound marks, or even traditional marks, that would render them memorable and distinctive as a result”. As such, there is no requirement that consumers need to memorize the sign exactly and in its entirety for the sign to be eligible for registration. The BoA also recalled that consumers generally take more note of the first part of a sign, “the characteristic trumpet fanfare” in this case, which in its view does not lack distinctiveness.

The BoA further ruled that the sound mark at issue is capable of indicating the commercial origin of the claimed goods, “because the ‘James Bond theme’ which according to the applicant appears (although in slightly modified versions) in all the James Bond movies, is, along with the elements ‘007’ and ‘James Bond’ an indicator of a commercial and not only artistic origin, i.e. showing that its commercial origin is the company producing the films in the ‘James Bond’ series (30/06/2009, T-435/05, Dr. NO, EU:T:2009:226, § 25)”.

Accordingly, the contested decision was annulled, and the sign was registered for all claimed goods.

Final remarks

The BoA’s decision is in line with the CP11 Common Practice on the required degree of distinctiveness of sound marks, as the sign at issue (a melody) has a resonance and is capable of being perceived by the relevant public as an indication of commercial origin.

The CP11 results from consultations and contributions from different stakeholders, including “the collaboration of the working group, composed of experts from national IP offices of the EU, the EUIPO and user associations”. It aims to serve as a reference document for Intellectual Property Offices and users alike, increasing legal certainty by providing guidance on the examination of formal requirements and grounds for refusal of new types of trademarks (sound, motion, multimedia, and hologram marks) in light of the EU Trademark Reform that eliminated the requirement of the graphical representation.

Credits:

The first and fifth images are by Gerd Altmann from Pixabay.

The second image is by 3D Illustrator and Graphic Designer from Pixabay.

The third image is by Clker-Free-Vector-Images from Pixabay.

The fourth image is by MasterTux from Pixabay.