The General Court (GC) of the Court of Justice of the European Union has confirmed that sound marks need to have a distinctive character to be registered as a European Union Trade Mark (EUTM).
Globo Comunicação e Participações S/A (Globo) applied to register a sound mark (shown above) initially for goods and services in classes 9, 16, 38 and 41. This specification was later limited and covered “DVDs and other digital recording media; computer software; applications for tablets and smartphones” in class 9, “television broadcasting services” in class 38 and a range of educational and entertainment and television programmes in class 41. The sound mark was refused registration by the European Intellectual Property Office (EUIPO) under Article 7(1)(b) of the EUTMR because it consisted of a simple “banal ringing sound” that could not be perceived as an indication of commercial origin. The Board of Appeal who agreed, saying:
“the mark applied for consisted of the repetition of a sound that resembled a ringtone which was banal in every respect, notwithstanding the fact that the mark consisted of a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G sharps”.
and [the trade mark was]
“a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound which would generally go unnoticed and would not be remembered by the target consumer”.
The GC agreed, saying that a sound mark must have “a certain resonance which enables the target consumer to perceive and regard it as a trade mark and not as a functional element or an indicator without inherent characteristics”.
This mark was no more than the repetition of two identical notes: it was too simple and unable to function as a trade mark unless it had acquired distinctiveness through use.
Globo Comunicação e Participações S/A v EUIPO T-408/15 (13 September 2016)