Hitting the Right Note – BVG v EUIPO

The EU General Court made (sound) waves as it delivered its judgment in Berliner Verkehrsbetriebe (BVG) v EUIPO (Case T-288/24), deciding that BVG’s sound mark could qualify for trade mark protection.

Background

On 15 March 2023, BVG filed an EU trade mark application for a sound mark consisting of a short melody in class 39 covering transport and similar services. You can hear the sound mark here.

That application was refused by the examiner on 3 October 2023 pursuant to Article 7(1)(b) of Regulation (EU) 2017/1001 on the basis that the mark was devoid of any distinctive character.

BVG filed an appeal on 6 November 2023. The EUIPO Board of Appeal rejected the appeal on the same grounds, i.e. that the mark was devoid of distinctive character. The Board of Appeal found that the mark applied for was so short and banal that it had no resonance or ability to be recognised by consumers as an indication of the commercial origin of the services which it covered.

Following this, BVG appealed to the EU General Court.

Decision

The court set out to establish whether the mark is devoid of distinctive character.

The court said that, in order to possess the required distinctiveness, the 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 any inherent characteristics.

When considering the mark, the court highlighted that it is well known that operators in the transport sector use jingles, or short sound patterns, in order to create a sound identity recognisable by the public.

The court also remarked that the sound mark in question consisted of four different perceptible sounds. In a previous decision, Sound mark (T-408/15), a sound sign that was no more than the repetition of two identical notes and characterised by excessive simplicity was found not capable of having distinctive character.

In assessing the mark, the court said that the sound of the melody 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 (they said it was not a sound which is usually heard when using transport services, such as the sound of a passing train, or an aircraft taking off).

The court said the purpose of the melody was to serve as a jingle, i.e. a short, striking sequence likely to be remembered. Despite its brevity, which the court said was a characteristic specific to jingles and is intended precisely to facilitate their memorisation, the sound of the melody was intended to draw the public’s attention to the commercial origin of the services covered by that mark, in accordance with the customs of the transport sector.

The court also drew parallels with EU registered trade mark no. 018800487 owned by German railway undertaking Deutsche Bahn AG, and no. 017396102 owned by Flughafen München GmbH (which operates Munich airport), which likewise have melodies that have nothing to do with the transport services covered (these marks can be heard here and here).

Accordingly, in view of the characteristics of the mark applied for in terms of duration, melody used, perceptible sounds, and the role these characteristics play in assessing distinctive character of a sound mark (as highlighted by previous EU decisions), the Court found that the Board of Appeal made an error of assessment in finding that the mark applied for lacked distinctive character.

This was on the basis that:

• It is a custom of the transport sector to use sound to allow the target public to identify the goods and services of an undertaking; and
• The elements which characterise the mark are intended precisely to make an impression on that public as a short and striking jingle that is likely to be remembered and accordingly indicate the commercial origin of the services in question.

The court added that neither the duration of the mark nor its alleged simplicity or banality were obstacles which were sufficient to justify the lack of any distinctive character.

The court reiterated that even if the mark did have a functional role to announce the associated transport service, this would not in any way prevent the mark from performing its function of indicating the commercial origin of that service. Indeed, that would even be the role of the mark in such a context, given that the very purpose of the sound of the melody was to allow the target public to distinguish that service and the undertaking concerned from other services which may be offered to it by other transport operators.

Comment

This case could strike a chord for many companies and open the door for seismic change in how sound marks are assessed in the EU. In the past, it has been difficult for such marks to possess distinctive character but that could shift in light of this judgment. If you’re looking to file a sound mark in the EU, now might be the time (or should that be chime?).

If you would like assistance with any trade mark related queries, get in touch with our legal team at info@briffa.com or through our website form. Our IP experts are here to help.