[Guest post] The current status and future of sound marks

The IPKat has received and is pleased to host the following guest contribution by Eric Möhlenberg (Friedrich Graf von Westphalen) on various decisions of the Court of Justice of the European Union (CJEU) and the European Union Intellectual Property Office (EUIPO) in regard to sound marks in our everyday life. Here is what Eric writes:

The current status and future of sound marks

by Eric Möhlenberg

Listening to the wind or the latest sound mark?

Whether in traffic, at the airport or at the cinema, people are exposed to a variety of brand messages every day. The predominant use of visual brands has led to a sensory overload for consumers, which is also the reason why trade mark owners are relying on sound marks to set themselves apart from competitors. In this context, a large number of registrations of sound marks are rejected due to a lack of distinctiveness under Article 7(1)(b) EUTMR and are regularly the subject of decisions by the CJEU and the EUIPO. The following contribution illustrates the current status of case law in regard to sound marks and provides an outlook on the future of these marks.

Distinctiveness of sound marks

Registration of a sound of our everyday life is particularly problematic and also the subject of the CJEU judgment 'Ardagh Metal Beverage v EUIPO' (T-668/19; discussed here). The judgment is not the first decision of the CJEU in this field, as the CJEU had already commented on the requirement of graphic representation of sound marks in its judgment 'Shield Mark' (C-283/01). However, in this decision, the CJEU commented for the first time on the requirement of distinctiveness under Article 7(1)(b) EUTMR in relation to sound marks. The decision concerned the registration of a sound made when opening a beverage can (no. 017912475; you can listen to the sound file here) and was rejected due to lack of distinctiveness. In the opinion of the CJEU, the criteria for assessing distinctiveness are the same for all types of trade marks, but this does not necessarily apply to the perception of the relevant public. Unlike word or figurative marks, the relevant public is not (yet) used to recognizing sounds as a reference to a specific company. In contrast, the German car manufacturer Audi successfully registered the sound of a heartbeat as a sound mark (no. 018071642; you can listen to the sound file here).

Sound marks on the road (and elsewhere)

People also encounter a variety of sound marks in the road traffic. In this context, the German car manufacturer Porsche applied to register the sound of the electric model Taycan as a sound mark (no. 018795489; you can listen to the sound file here). The EUIPO refused the registration on grounds of lack of distinctiveness (JW-22/1243fl; discussed here); it reasoned that the synthetic sound of a motor would not be perceived as unusual in connection with the goods and services concerned and also would not enable the relevant public to distinguish the applicant's goods and services from those of other providers. Due to the opposition filed by Porsche, the case has been pending before the Board of Appeal of the EUIPO since 15 January 2024 (R1900/2023-5). The successful registration of the sound of Porsche at the German Patent and Trade Mark Office (DPMA) is not binding (no. 302022118770). However, the deviating decision of the DPMA and the successful registration of a similar sound by the German car manufacturer BMW illustrate the controversial nature of the decision (no. 018424124; you can listen to the sound file here).

Furthermore, people encounter sound marks on buses and trains or at the airport. In this context, the company Berliner Verkehrsbetriebe (BVG) applied for the registration of a two-second sound for goods and services in the field of passenger transportation in class 39 (no. 018849003; you can listen to the sound file here). The EUIPO refused the registration of the sound (B61067EM), whereupon the BVG filed an opposition (discussed here), but the appeal against the EUIPO's refusal was unsuccessful (R2220-2023-5). The Board of Appeal of the EUIPO confirmed the rejection of the sound and stated in its reasoning that the sign was not 'catchy' enough to stand out from the already existing jingles and did not fulfil the origin function of a trade mark. Moreover, in the opinion of the Board of Appeal, the sound is perceived by the relevant public as a functional sound element which is intended to draw the listener's attention to the subsequent announcement (discussed here). On the other side, examples of successfully registered jingles in the transportation sector are the jingles of Deutsche Bahn (no. 018800487; you can listen to the sound file here) and Munich Airport (no. 017396102; you can listen to the sound file here).

Sound marks in audiovisual

In addition to public transportation, people also encounter sound marks on the radio and at the cinema. In this regard, the Romanian company Mora Tv Srl applied to register the sound of the famous children's song 'Johnny Johnny Yes Papa' as a sound mark (no. 018713855; you can listen to the sound file here). The EUIPO again refused the registration of the sound mark due to lack of distinctiveness and based its decision on absence of an easily identifiable melodic structure (discussed here). According to the EUIPO, the sound is rather typical for music in cartoons or songs for children and does not enable the relevant public to clearly identify it as a trade mark. The Board of Appeal of the EUIPO confirmed the decision, so the filed appeal was unsuccessful (22.318/08.06.2022).

Conversely, the sound file of the first 25 seconds of the James Bond theme was successfully registered as a sound mark (no. 018168977; you can listen to the sound file here). Unlike the decision of the EUIPO (D11956EM), the Board of Appeal of the EUIPO (R1996/2020-5) came to the conclusion that the sound is distinctive for the goods applied for (discussed here). In the opinion of the Board of Appeal, especially the length of the sound did not prevent it from having distinctive character, as the beginning of the sound consists of the characteristic trump card and the consumer generally pays the greatest attention to the initial part of a sign.

Not procrastinating, of course, but rather
assessing the distinctiveness of the sound mark

That said, the application of the video streaming service Netflix to register the well-known gong as a sound mark (no. 017916805; you can listen to the sound file here) was rejected by the EUIPO due to a lack of distinctiveness (R0752/2019-1). While Netflix nowadays would fulfil at least the requirement of (acquired) distinctiveness, this was not the case at the time of the application in 2017. Interesting about Netflix's trade mark strategy is that the video streaming service did not appeal the decision and instead successfully registered a multimedia trade mark two years later, consisting of the originally filed gong sound and a video with the Netflix emblem (no. 018140429; you can listen to the sound file here).

Conclusion

The analysis of the case law of the CJEU and the EUIPO illustrates the difficulties that companies face when registering sound marks in connection with the requirement of distinctiveness under Article 7(1)(b) EUTMR. In particular, the fact that, unlike in the case of word or figurative marks, the relevant public is not (yet) used to recognizing sounds as an indication of commercial origin makes it difficult to prove the required distinctiveness.

Moreover, the case law of the CJEU and the EUIPO outlined above illustrates that no clear line has yet been found regarding the registration of sound marks and that the case law on sound marks still needs to be further developed. In this context, the use of sounds in the trade mark strategies of trade mark owners as well as the increasing number of applications for sound marks leads to an increasing likelihood that the relevant public will recognize sounds as an indication of commercial origin.

Every further decision on sound marks, no matter whether the registration is successful or not, leads to greater clarity in regard to the requirement of distinctiveness of sounds. Last, but not least the registration of sounds in all areas of our everyday life illustrates the potential areas of application for sound marks as well as the potential increasing importance of these trade marks in the future.