Revving halt: EUIPO upholds refusal to register Porsche’s accelerating engine sound mark

 

By decision of 20 June 2024 (R 1900/2023, original German version here and English machine translation here), the Board of Appeal (BoA) of EUIPO confirmed the initial refusal (see The IPKat here) to register a sound mark consisting of an accelerating engine noise. The BOA confirmed the lack of distinctive character because the requested sound sequence represents a characteristic typical of electric vehicles, namely the acceleration or improvement of their performance until they reach the desired travelling speed.

 

Background

 

On 18 September 2019, Dr. Ing. h.c. F. Porsche Aktiengesellschaft (“the applicant”) filed application no. 018795489 to register a sound mark consisting of 16 seconds evoking the acceleration of an engine for automotive-related products and services (classes 9, 12, 28 and 41). On 25 August 2023 the examiner issued a decision of total refusal of the trade mark applied for pursuant to Article 7(1)(b) EUTMR.

 

The applicant appealed on the following main arguments:

 

a) the sound sequence applied for is memorable and capable of serving as an indication of commercial origin as it evokes strong emotions and ideas;

b) the sound sequence applied for is not noises, which are naturally produced by the goods applied for or in the rendering of the services, but rather a sound sequence specifically comprised as a trade mark and created artificially;

c) it is not a requirement for distinctive character for the targeted public to recognise the precise sound sequence upon hearing again;

d) the sound sequence applied for has nothing to do with the sound of an internal combustion engine;

g) the public is accustomed to the use of sounds as a trade mark for electrical vehicles and will therefore perceive the trade mark applied for from the outset as an artificially created sound for imparting identity.

 

The decision

 

The BoA dismissed the appeal and confirmed the refusal of the application on the ground of lack of distinctiveness pursuant to Article 7(1)(b) EUTMR.

 

As it was also discussed in detail a short while ago on The IPKat, in the case of sound marks, it is necessary for them to have a certain resonance, by means of which the targeted consumer can recognise it and interpret it as a trade mark and not merely as a functional component or as an indicator without any intrinsic characteristics. To be registered as a trade mark, the targeted consumer must understand a sound sign as an identification of the commercial origin of the goods/services (T-408/15 and T-668/19).

 

As regards to the relevant public, the goods and services in classes 9, 12, 28 and 41 target both the general public and specialists. Therefore, the level of attention will be average to above average. Nevertheless, the level of attention paid by the relevant public cannot have a decisive influence on the legal criteria used to assess whether a sign is descriptive or devoid of distinctive character (T-26/20 and T-423/18).

 

The sign applied for is a sound of a total of 16 seconds, even though the first four seconds are phoneless, followed by an electronically generated, intensified barrel-reinforcing sound sequence, with the last three seconds in turn being practically meaningless. Accordingly, the BoA concluded that the statements made in the contested decision must be agreed with in that the sound sign applied for depicts the effect of accelerating or increased performance. The relevant public will at most assume that the sound refers to the aspect of acceleration or increase in performance of the vehicles and cars, which is why the sign is devoid of distinctive character.

 

Comment

 

The automotive industry has long incorporated sound effect systems in hybrid and electric cars to produce an artificial vehicle noise. The reason was originally to ensure pedestrian safety. For example, when driving a hybrid or electric cars, drivers tend to accelerate without realising it because the sound produced by the engines of these vehicles often does not match the expected “roar” of a conventional internal combustion engine. The reasons for this tendency in the electric vehicle (EV) market are also to improve the “e-sound” of electric or hybrid vehicles. More precisely, this “e-sound” is reproduced through a loudspeaker in the underbody of the vehicle, so that it can be heard by the driver and nearby pedestrians.

 

Porsche is the most recent automotive company to have its application to register a vehicle sound mark rejected at the EUIPO due to lack of distinctiveness, despite the sound being registered as a trade mark in Germany. Back in in February 2023 the Italian manufacturer of luxury cars Lamborghini filed an application for an EU mark for the sound of an electric vehicle which was also refused by decision of examiner of 1^st September 2023.

 

The major question surrounding this trend of rejections is how distinctive the sounds need to be to meet the relevant threshold. The creativity of electric vehicle engine sounds will be somewhat constrained by legislation and brand image, raising the question of how manufacturers will create engine sounds that consumers can recognize. In addition and in any event, it should be recalled that, in principle, these “e-sounds” may acquire a “secondary meaning” that could make the sound eligible for sound mark protection once consumers associate the sound with a particular manufacturer.

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