On 13 September 2016 the EU General Court confirmed that sounds may constitute a trade mark but affirmed a decision of the EUIPO refusing to register a sound sign that was the standard sound of a ringing telephone or alarm.
Brazilian company Globo Comunicação e Participações ("Globo") had filed an application with the EUIPO to register the sound of a repeated G sharp note as a sound sign. The sound was represented graphically as follows:
Globo initially wanted to register the sound for recordings, computer software, apps; paper and printed matter; television broadcast services and education; entertainment and training services. This specification was subsequently reduced down to digital recording media and software; television broadcasting services and education and entertainment services in the form of TV programs.
However the EUIPO stated that the application did not satisfy Article 7(1)(b) of the Trade Mark Regulation as it was a simple and banal ringing sound that was devoid of distinctive character and could not act as an indicator of the origin of the goods. The Fifth Board of Appeal of the EUIPO dismissed Globo's appeal agreeing that the mark was devoid of any distinctive character.
Globo appealed to the General Court arguing that the Board of Appeal made an error of assessment in respect of the distinctive character of the mark and that the brevity of the sound mark applied for cannot deprive it of its distinctive character and, though short, it is not simple. Further the sound mark is a jingle that is neither ordinary nor normal.
The General Court confirmed that a sound mark may constitute a trade mark, as long as it was able to be represented graphically (as was the case here). However this sound mark will be perceived by the public only as a mere function of the goods and services covered, not as an indicator of origin. The repetition of the 2 notes would go unnoticed and would not be remembered by a consumer as a jingle as it is the 'standard' ringing sound that is provided with all electronic devices with a timer, and all telephones. The consumer would not be able to identify it as belonging to Globo.
The Court ruled that, as the sound mark lacked of any distinctive character, the EUIPO did not err in refusing to register as a trade mark and the appeal should be dismissed.
This confirmation by the Court that sounds can constitute a trade mark corresponds with the new Trade Mark directive which has expanded what constitutes a trade mark to specifically include colours and sounds. Further the definition of a trade mark has been expanded so that marks do not need to be capable of being represented geographically. Marks only need to be represented using generally available technology and in a manner which enables the public to clearly determine the subject matter of the protection.
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