Background

As part of its acoustic brand identity, Berliner Verkehrsbetriebe (BVG), a public transport provider in Berlin,) sought trade mark protection for several jingles used in connection with announcements.

While most marks were registered, the EUIPO objected to a two second long sound on the grounds of lack of distinctiveness (Article 7(1)(b) of the EU Trade Mark Regulations). European Union trade mark (EUTM) number 018849003 was applied for in relation to class 39 (transportation; passenger transport; wrapping and packaging services; storage; arranging of transportation for travel tours).

Registrability of sound marks

In general, the criteria for the assessment of distinctive character are the same for different categories of marks, that is, the registrability test for word marks is the same as for sound marks. Yet, the public’s perception may differ in relation to each of those categories, and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories.

In order to be registrable a sound must have a certain resonance, on the basis of which the consumer can recognise it and identify it as a trade mark, and not merely as a functional component (for example, an alarm) or as an indicator without intrinsic characteristics. Two categories are usually not registrable: extremely short, banal sounds, and entire songs or symphonic movements.

A sound mark can be registered in musical notations or audio files.

The Board of Appeal’s decision

The Board of Appeal confirmed the preceding examiner’s decision and found that the jingle was not capable of indicating a commercial origin.

The Board of Appeal gave up some of the examiner’s arguments against the mark, who held that sounds were not generally used as a means of identification in the relevant market sector, and that the more jingles there are on the market, the more the new application would have to stand out from them.

Although not deemed a prerequisite, the Board of Appeal did find that the BVG jingle was distinguishable from other relevant jingles, namely Deutsche Bahn’s (a German railway company) EUTM number 18800487, and Munich Airport’s EUTM number 17396102. However, this was not enough to find distinctiveness. The jingle was too short, not sufficiently memorable, and rather monotonous and banal.

BVG had argued that the sound was complex as had a polyphonic nature (tones that are played by various voices simultaneously) and 18 pitches. The artificially-created sound of a bell would further contribute to distinctiveness. The artistic concept and genesis would represent the open-mindedness and diversity of Berlin.

This did not convince the Board of Appeal, which perceived only four different sounds. Also, because sound sequences in the relevant sector usually preface announcements, the public would simply perceive it as a functional signal. The public would not analyse it and ask what it might mean or stand for. The public’s attention would primarily be geared to the subsequent statement.

Practical take-aways

Apparently, the parallel BVG application number 018848948, which represents the same sound in musical notations, did strike a chord with the EUIPO. It was registered without objection.

The current decision may imply that it is easier to get sound marks registered when represented in musical notations rather than in audio files. On the other hand, the enforceability of the depicted sound mark will be difficult if the audio equivalent is not perceived as an indication of origin, which is a requirement for trade mark infringement.

Useful links

• The BVG acoustic brand identity strategy: dycip.com/berliner-verkehrsbetriebe
• BVG EUTM no. 018849003 (sound): dycip.com/eutm-018849003
• BVG EUTM no. 018848948 (graphic representation): dycip.com/eutm-018848948
• Deutsche Bahn EUTM no. 18800487 (sound): dycip.com/deutsche-bahn-sound-mark
• Munich Airport EUTM no. 17396102 (sound): dycip.com/munich-airport-sound-mark