September 27, 2016

The EU General Court has upheld a EUIPO Board of Appeal decision rejecting an application to register a ringing sound sign as a EU trade mark for, amongst other things, television broadcasting services and entertainment services.

In April 2014, Globo Comunicação e Participações S/A filed an application to register a sound sign, which consisted of one note that was repeated and was represented graphically as follows:

Registration was sought in classes: 9 (including “magnetic data carriers; compact discs, DVDs”); 16 (including “paper, cardboard, printed matter”); 38 (“television broadcasting services”); and 41 (including “education; providing of training; entertainment; sporting and cultural activities”).

The examiner informed Globo that the mark could not be registered on the ground that it did not satisfy the conditions set out in Article 7(1)(b) of the EU Trade Mark Regulation (207/2009/EC), since it consisted of a “simple and banal ringing sound” and could not be perceived as an indicator of the commercial origin of the goods.

Globo appealed to EUIPO.  The Fifth Board of Appeal dismissed the appeal stating that, in order to be capable of indicating to the consumer the commercial origin of the goods or services concerned, the sign had to have characteristics that enabled it to be easily remembered by him/her.  It pointed out that, although it was not necessary for the sign to be original or fanciful, it still should not be banal or totally insignificant.  In the Board’s view, the sign was “a very simple sound motif”, i.e. a “banal and commonplace ringing sound” that would generally go unnoticed and would not be remembered.  Globo appealed to the General Court.

The General Court found that it was not unusual for a consumer to identify certain goods or services by means of a sound, for example in television broadcasting, where it was common for a consumer to distinguish a particular product or service coming from a particular undertaking solely as a result of a sound, for example, a jingle.  However, a sound mark must have “a certain resonance”, the court said, which enabled the consumer to perceive and regard it as a trade mark rather than a functional element or as an indicator without any inherent characteristics.

In the General Court’s view, a sound sign such as this one, which was characterised by “excessive simplicity” and was “no more than the simple repetition of two identical notes” was not capable of conveying a message that would be remembered by consumers and therefore seen as a trade mark.  It therefore dismissed the appeal on the grounds that the mark was devoid of any distinctive character pursuant to Article 7(1)(b) of the EUTMR.  (Case T-408/15 Globo Comunicação e Participações S/A v EUIPO EU:T:2016:468 (13 September 2016) — to access the judgment in full, go to the curia search form, type in the case number and follow the link).