The EU General Court has recently issued a decision on appeal from EUIPO brought by the German company Berliner Verkehrsbetriebe (BVG) concerning its European Union trade mark (EUTM) application for a sound mark consisting of a two-second jingle relating to transport services. The General Court annulled the EUIPO Board of Appeal’s decision and seized the opportunity to reiterate that the criteria for assessing the distinctiveness of sound marks are no different from those applicable to other categories of mark, and that even a minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 inapplicable.

 

Background

 

The German company Berliner Verkehrsbetriebe (BVG) filed an EUTM application for a sound mark consisting of a few melodic notes (which can be listened to here), covering “transport; passenger transport; wrapping and packaging services; storage; arranging of transportation for travel tours” in Class 39.

 

The EUIPO examiner rejected the application, considering that the mark applied for lacked distinctive character.  Upholding that decision, EUIPO’s Fifth Board of Appeal considered that the sound mark was so short and banal that it had no resonance or ability to be perceived as an indication of origin.

 

Berliner Verkehrsbetriebe (BVG) escalated the matter to the General Court, seeking the annulment of the Board’s decision, arguing notably that the Board of Appeal was wrong to consider that the application was devoid of distinctive character and had failed to correctly assess the characteristics of the sound mark.

 

Decision

 

The General Court upheld this action, and annulled the Board’s rejection decision. According to the General Court, the Board had made several errors in concluding that the duration and resonance was not such as to confer distinctive character with regard to public transport services.

First, as regards the habits of the relevant sector, it was well known that operators in the transport sector increasingly use “jingles” to create a sound identity recognisable by the public for the goods and services associated with it.  Such jingles allowed the listeners’ attention to be captured in an environment which can sometimes be noisy.

 

Second, Berliner Verkehrsbetriebe (BVG) had applied for a sound mark that consisted of a melody in which four different perceptible sounds followed one another – it did not have a direct link with the services covered by that mark and did not appear to be dictated by technical or functional considerations.  The sound was not a noise usually heard when using transport services, e.g. it was not the sound of a passing metro or train, or the sound of an aircraft taking off.  Also, it was not a melody already known to the public, which gave rise to the presumption that it was an original work.   The melody was of a similar length to the melody covered by an EU sound mark owned by the German railway undertaking, Deutsche Bahn AG (which can be listened to here) and also that of the undertaking which operates Munich Airport, Flughafen München GmbH (which can be listened to here).  The Court observed that both those melodies also had nothing to do with the transport services covered.

 

Accordingly, the Court held that the Board had made an error of assessment in finding that the sound mark lacked distinctive character on the ground that it was “extremely short (two seconds) and simple (… four perceptible sounds)”.

 

The General Court also confirmed that the Board made a further error when it found that the sound mark had “merely a functional role”.   Considering one potential functional role, as the Board had done, of the sound mark being used in a train station to announce the associated transport service, the Court said that such use would not in any way prevent the sound mark from performing its function of indicating the commercial origin of that service.  

 

As regards the other services covered by the sound mark, which did not directly concern transport, but aspects which could be associated with it, the Board had found that the mark was not capable of fulfilling its essential function of indicating their commercial origin, given that “the relevant public exposed to that very short and simple sequence of sounds in the context of those services … [would assume] at most that the sound [was] linked to certain aspects of the service (for example, the beginning of an announcement) or [that it was] used to advertise those services”.

 

Specifically, as Berliner Verkehrsbetriebe (BVG) rightly pointed out, it was challenging to determine which elements of the services associated with the sound mark could be connected to the melody that constitutes that mark. Additionally, it raises the question of how the potential use of the sound sign in advertising those services could hinder its registration as a trademark.

 

Consequently, the Court held that the Board had failed to correctly assess the distinctive character of the sound mark in the light of Article 7(1)(b) of Regulation 2017/1001.  Accordingly, the General Court annulled the Board of Appeal’s finding that the application was devoid of distinctive character and upheld the appeal.

 

Comment

 

Sound marks – in which sound is harnessed to perform the trade mark role of uniquely identifying the commercial source of products – have gained attention among branding strategies seeking non-traditional avenues to secure trade mark protection in the European Union.

 

This decision reaffirms enduring EU principles: sounds cannot be exclusively claimed through trade mark registration by an undertaking, unless they distinctly indicate the origin of said product.  The distinctive and recognisable character of a sign is non-negotiable when it comes to registering a trade mark.  In a market that is becoming increasingly congested, this decision serves only to underscore the necessity of distinctiveness as the fundamental basis for trade mark protection.

 

The full case decision can be viewed here.