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The General Court has upheld an EUIPO decision and refused registration for the sound sign resembling a ringtone as represented above:
The Applicant, Globo Comunicação e Participações S/A, applied to register the ringtone as an EUTM in Classes 9, 16, 38 and 41 for, amongst other things, applications for tablets and smartphones in class 9, television broadcasting services in class 38 and television programme services in class 41.
Board of Appeal decision
The Fifth Board of Appeal held that, to be capable of indicating the commercial origin of the goods and services to the consumer, the mark had to have characteristics which enabled it to be easily remembered by that consumer. The mark was a simple sound motif, in essence a banal and commonplace ringing sound which would generally go unnoticed and would not be remembered by the target consumer. It concluded that the mark was devoid of any distinctive character as regards the goods and services covered by the application, and therefore refused the registration.
The Applicant appealed to the General Court, arguing that the Board of Appeal had been wrong to find that the mark was devoid of distinctive character. It said that despite the brevity of the sound mark, the mark was not simple but was characterised by a sequence of notes resulting in the repetition of a specific sound, which is longer when repeated and which makes it easier for the consumer to identify and remember the mark.
The General Court did not dispute that the notation of musical notes on a stave constitutes a “graphical representation” and was capable of being registered. However, such a mark must also not be devoid of distinctive character. It stressed that those trade marks which should not be registered are those which are incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question.
The Court of Justice established in Glaverbel v OHIM that, whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent when applying those criteria that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than those in other categories. The General Court stressed that it is necessary for the sound sign to 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.
Consequently, a sound sign which was not able to mean more than the mere banal combination of notes of which it consists would not enable to target consumer to perceive it as functioning to identify the goods and services at issue, since it would be reduced to a straightforward “mirror effect”.
The General Court pointed out that a sound sign which is characterised by excessive simplicity and is no more than the simple repetition of two identical notes is not capable of conveying a message that can be remembered by consumers, with the result that consumers will not regard it as a trade mark, unless it has acquired distinctive character through use. For that reason, the mark applied for will only be perceived as a mere function of the goods and services and not as an indication of commercial origin.
Though the Applicant argued that the unusual nature of a telephone ringtone as an identifier of the origin of a service gave the mark applied for distinctive character, the General Court said that this was not sufficient for it to be capable of identifying the origin where its excessive simplicity makes the mark incapable of identifying the origin of the goods or services.
The Applicant also argued that the score showed a stave with a treble clef with a tempo of 147 crotchets per minute, two repeating G sharps, and that this would not escape the target consumer’s attention. However, the General Court held that the sound merely consists of the repetition of two notes and so no such nuances could be heard by the target consumer.
The General Court said that, for the class 9 goods, the mark would be understood as a mere indication that the device was being started. As for the class 38 and 41 services, the mark would simply be perceived to signal the beginning or end of a television programme.
Therefore, the General Court held that the mark at issue was not capable of being an indication of commercial origin but was merely a function of the goods and services. For that reason, the appeal was dismissed and the application was refused.