Johnny Johnny Yes Papa: no sound trade mark registration for nursery rhyme

 

By decision dated June 15, 2023 (original Romanian version and English machine translation) the EUIPO rejected the application for registration of a European Union sound trade mark featuring the nursery rhyme “Johnny Johnny Yes Papa” on the grounds of lack of distinctiveness.

Background

In 2022, a Romanian company applied to register a 39-second EU sound trade mark featuring the famous nursery rhyme “Johnny Johnny Yes Papa” in classes 9, 28, 35, 38 and 41. The examiner raised an objection to this registration, considering that the sound mark in question would be devoid of distinctive character under Article 7 (1b) EUTMR. The objection was based on the following main findings:

i) the length of the sound mark;

ii) the fact that it does not contain an easily identifiable and recognisable melodic structure;

iii) the fact that it consists of the children's rhyme “Johnny Johnny Yes Papa”.

The applicant company replied to the objection.

The decision

The EUIPO points out that the acceptability of a sound mark depends, as with other kind of trade marks, on the relevant public's perception of a sign. As it is for any other trade mark, also for sound marks distinctiveness is key. A sound must have "a certain resonance" (T-408/15) which allows the target consumer to perceive and consider it as a trade mark.

However, in the present case, this condition was not met for the following reasons.

a) Length of the sound mark

Although the length of a sound mark does not disqualify it from being considered as an indicator of origin, and the EUTMR is silent in this regard, the EUIPO's examination guidelines specify the types of sound marks that are not likely to be accepted without proof of acquired distinctiveness, including sounds which are too long to be considered as an indication of origin and sounds which are usually associated with certain goods and services.

b) Lack of easily identifiable and recognisable melodic structure

The sign does not contain an easily identifiable and quickly recognisable melodic structure since it begins with a simple, repetitive motif, which is then accompanied by a few basic tones and sounds, typical of music played in cartoons, movies or songs with lyrics for babies or children. Thus, it does not contain any relevant melodic moment/structure that would allow the public to clearly identify it as a brand, and consequently lacks the ability to function as an identifier of commercial origin.

d) The sound trade mark does not identify the commercial origin of goods or services

Consumers are not in the habit of making assumptions about the origin of products or services in the absence of any graphic or verbal element, because, in general, a sound in itself is not commonly used in any field of commercial practice as a means of identification. However, marketing habits in an economic sector are not fixed and can evolve in a very dynamic way, including through the use of sound trade marks.

When a sound mark consists of non-distinctive/descriptive/generic verbal elements pronounced in a clear manner and without striking or unusual sound elements, the sound mark will be considered non-distinctive.

The trade mark at issue here contains several phrases taken from a song that is very popular throughout the world and for which there are numerous versions and videos that can easily be found on the internet.

e) No acquired distinctive character

According to the EUIPO, the applicant did not submit any opinion polls/surveys or depositions, nor did it provide details of turnover and sales figures or any document regarding investment in advertising and efforts made to promote the brand.

Thus, it was not possible to establish the market share regarding the objected products and services, the intensity, geographical extent and duration of the use of the sound trade mark, or the proportion of the relevant public that identifies the origin of the products and services, before the filing date of the application.

Comment

As regards the evaluation of the length and resonance of sound trade marks, we may recall the case of the well-known James Bond theme sound trade mark. The application for registration was refused by decision of 25 September 2020 on the basis that the sign consisted of a structure composed of three music segments, which would make it difficult for the consumer to immediately perceive the sign as an indication of origin for all the goods listed in the application for registration, most of which did not have a link with the film industry and, more generally, with the entertainment industry. The EUIPO therefore concluded that the consumer would not perceive this sound trade mark as a badge of origin.

In 2021 the Board of Appeal of the EUIPO (R 1996/2020-5 see The IPKat here) came to the opposite conclusion, holding that the trade mark at issue consists of the first 25 seconds of the “James Bond Theme” and comprises three musical parts that interact distinctively with each other. The originality and easy memorability of the sound trade mark does not depend on its length, as it is instead the case for classic' marks (in terms of graphic or word extension). On the contrary, according to the Board of Appeal, it is a sound that is recognisable by the consumer who perceives it as a sign of origin, not only on an artistic-cinematographic level, but precisely with reference to all the goods claimed, which are typical merchandising products attributable to the company that owns the rights and produces the movies of the “James Bond” series.