Board of Appeal confirmed: Short jingle not protectable as a sound mark

Sound marks that can serve as jingles are difficult to protect in the EU. The registration practice seems inconsistent. Some jingles get registered while others are rejected although they appear to be equally ‘complex’. The relatively short jingle of a public transportation company had been rejected by the European Union Intellectual Property Office (‘EUIPO’) not too long ago (IPKat here). The Board of Appeal of the EUIPO (‘BoA’) recently confirmed the rejection.

Background

On 15 March 2023, Berliner Verkehrsbetriebe (‘BVG’, the company operating the public transportation system in Berlin), applied for a two-second long sound mark as an EU trade mark (no. 018849003; you can listen to the sound file here). Registration was sought for the following services in class 39:

‘Transportation; passenger transport; packaging of goods; storage of goods; organization of trips’.

The EUIPO rejected the application due to lack of distinctiveness (Art. 7(1)(b) EUTMR). It argued that the general public is not used to sounds indicating the commercial origin of goods and services. The sign in question did not have the required resonance, which enables the relevant consumer to perceive and regard it as a trade mark and not as a functional element or as an indicator without any inherent characteristics. The sound was considered to consist of a banal melody, which is too short, not sufficiently memorable and quite monotonous.

The examiner also found that jingles are common in the transport sector. They precede or end announcements and are meant to increase the attention of the public but not to indicate the commercial origin.

The Board of Appeal’s decision

BVG’s appeal was dismissed (case R2220-2023-5).

The BoA agreed with the standard applied by the EUIPO in order to assess the distinctive character of the sound mark. While the criteria are identical for all categories of trade marks, the relevant public’s perception is not necessarily the same for each of those categories. It may prove more difficult to establish the distinctiveness of certain types of marks. This is particularly true for sound marks. They must have a certain resonance, which allows consumers to perceive the sound as a trade mark and not just, e.g., as a functional element.

The BoA found that the average consumer in the EU is relevant because the sound does not contain any text that would be understood in certain Member States only. Further, there is no indication that the sound will be perceived differently in particular parts of the EU.

The BoA held that the two-second long sound in question consist of four perceivable notes, which it considered to be too short to have the necessary resonance or memorability.

Moreover, according to the BoA, it is a well-known fact that loudspeaker announcements in train stations, airports etc. are commonly preceded by a jingle in order to capture the attention of travelers in these often noisy environments. Therefore, the sound merely has a functional purpose for the services ‘transportation; passenger transport’.

As regards ‘packaging of goods; storage of goods; organization of trips’, the BoA held that the sound indicates certain aspects of the services (e.g. the beginning of an announcement) or that it will be used in the advertisement therefor.

BVG argued that the jingle represents the cosmopolitanism and diversity of the city of Berlin. The BoA found that the relevant public is not aware of this fact and will not analyse the sound to figure out its meaning.

BVG also referred to jingles of other companies in the transport sector, such as those of the Munich Airport, SNCF and Deutsche Bahn, and contended that the sound mark applied for deviates from these sounds. The BoA responded that mere deviation from existing sounds is not sufficient to confer distinctiveness on the application.

Comment

The decision confirms the difficulties of registering sounds and jingles. Even though the General Court held that the case law on three-dimensional trade marks representing (part of) the goods does not apply to sound marks (case T-668/19 at paras. 29 et seqq.), the result is the same because the premise is identical for both types of marks: consumers are not used to infer the commercial origin of goods and services from these signs. As a consequence, special circumstances must exist to register a sound mark. Besides acquired distinctiveness (Art. 7(3) EUTMR), the case law mentions a ‘certain resonance’. This is a rather vague concept but seems to be akin to the requirement of ‘significant departure from the standard and customs in the relevant sector’ applied to three-dimensional trade marks representing (parts of) the goods (e.g. case C-417/16 P at para. 35).

The picture is by cottonbro studio and used under the licensing terms of pexels.com.