Trade marks can take many forms, including words, logos, devices, product shapes, scents, tastes, and sounds. In this article, we'll be specifically focusing on sound marks.
Porsche
Cars can take many forms too but anyone familiar with a Porsche will know that it has a very distinctive sound. It's not the typical "vroom vroom" or ''eat my dust' It's quite different and distinct, and therefore difficult to accurately express the sound that a Porsche makes in words.
A trade mark application at the European Union Intellectual Property Office (EUIPO)
In 2019, the company that manufactures Porsche, Dr. Ing. h.c. F. Porsche Aktiengesellschaft applied to register the sound of a Porsche as a trade mark. The application comprises 16 seconds of accelerating engine noise and it covers automotive-related products and services in classes 9, 12, 28 and 41 (vehicles fall into class 12).
The application was refused. This decision did not appeal to Porsche in the slightest. So Porsche did the logical thing – it filed an appeal to the Board of Appeal ("BOA") of the EUIPO.
The appeal of Porsche
Some of the grounds of appeal included:
- The sound sequence involved here is memorable. It evokes strong emotions and ideas. It is able to act as an indicator of commercial origin.
- The sound sequence is not random noise. It is a sound sequence created artificially. It is very much intended to be an indicator of origin.
- The sound sequence involved here has nothing to do with the sound of an internal combustion engine.
- The public is accustomed to the use of sounds as trade marks for electrical vehicles. The public will perceive the trade mark applied for as an artificially created sound for imparting identity.
The decision of the BOA
In a decision dated 20 June 2024, the BOA dismissed the appeal. In other words, the EUIPO's refusal to register the sound as a trade mark was upheld based on lack of distinctiveness – the relevant provision is Article 7(1)(b) of the EU Trade Marks Regulation. The BOA said this in justifying its decision - 'the requested sound sequence represents a characteristic typical of electric vehicles, namely the acceleration or improvement of their performance until they reach the desired travelling speed.'
Is the decision right?
The IPKat has made several interesting observations about the decision*:
- For a sound mark to be registrable it must have a 'certain resonance, by means of which the targeted consumer can recognise it and interpret it as a trade mark and not merely as a functional component or as an indicator without any intrinsic characteristics. To be registered as a trade mark, the targeted consumer must understand a sound sign as an identification of the commercial origin of the goods/services.'
- When it comes to goods of this nature (presumably expensive cars) the level of attention by potential purchasers will be 'above average'. Despite this, 'the level of attention paid by the relevant public cannot have a decisive influence on the legal criteria used to assess whether a sign is descriptive or devoid of distinctive character.'
- The mark applied for in this case is 'a sound of a total of 16 seconds... followed by an electronically generated, intensified barrel-reinforcing sound sequence, with the last three seconds in turn being practically meaningless'. The BOA concluded that 'the relevant public will at most assume that the sound refers to the aspect of acceleration or increase in performance of the vehicles and cars, which is why the sign is devoid of distinctive character.'
- Porsche is not the only car maker that has had an application to register a sound mark rejected by the EUIPO based on non-distinctiveness. In 2023 Lamborghini's application to register the sound of an electric vehicle was rejected by the EUIPO on the basis of lack of distinctiveness, despite the fact that the sound is registered as a trade mark in Germany.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.