It can be very powerful for a company to have a sound that is synonymous with its brand. Without anything being said, a consumer can hear a few notes or a short jingle (e.g. ‘Intel’ and ‘Nokia’ have European sound trade marks) and may then instantly recall his/her associated feelings towards that brand. However, as Globo Comunicação e Participações S/A (“Globo”) has found, it can be difficult to register a sound as a European trade mark (“EUTM”), including because it must be capable of graphical representation and of distinguishing the businesses’ goods/services from those of other businesses and it must not lack distinctive character.
The Globo EU General Court case
The EU General Court rejected Globo’s appeal to register as an EUTM its ‘sound which resembles a telephone ringtone’ or ‘a particular electronic ringing sound evoking sonar equipment, which consists of the repetition of two notes’ to be used for various goods/services including DVDs, computer software, applications for tablets and smartphones and entertainment services in the form of TV programmes. The ringtone/alarm sound was a simple repetition of two identical notes and could not convey to consumers a message to remember, meaning that they would not think that it was a trade mark, unless it became distinctive through use. The sound did not have distinctive character as consumers would not recognise it as indicating that the goods/services originated from Globo and instead it only identified a telephone ringing or an alarm. The sound was like the ringing sound that all electronic devices with a timer and telephone apparatus had and it was not an unusual jingle as there were only two notes.
The EU General Court did not dispute that musical notes on a stave could be a graphical representation. The upcoming EU trade mark reforms are likely to make it easier to register sound trade marks, as ‘sound’ will be added to the definition of EUTM and the graphical representation requirement will be replaced in favour of a test of clarity and precision. The Court helpfully gave examples of where it may be normal for consumers to identify the goods/services by sound (and by implication it may be easier to register the sound). This includes TV broadcasting and jingles or melodies in TV and radio communication and entertainment, telephony, IT media, computer software and the media sector.
Briffa advises on contentious and non-contentious trade mark matters and assists its clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in various jurisdictions around the world through its network of international agents. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us.