The EUIPO’s recent decision on 25 August 2023, reaffirms the position that EUIPO rulings are not bound by the decisions of national offices in Member States.

The case

In an era when electric vehicles (EVs) are dominating the automobile market, through the pursuit for state of the art, innovative travel, there really have been no pit stops in the drive for electric vehicle manufacturing.

On 18 November 2022, Porsche applied for a sound mark (EUTM Application 018795489), used to identify its electric vehicles range, in classes 12, 28 and 41 in relation to vehicles and parts for vehicles, toy vehicles, and the provision of online services for digital goods. The mark, as filed, can be heard here: Sound mark.

The grounds

The assessment of distinctiveness relies on an assessment of the mark in relation to the goods or services applied for and the perception of the relevant public for those goods or services. The EUIPO found that the sound mark was ‘simple and brief and is not presented as a perceived musical composition’. The office also stated that ‘the registered trademark is intended to attract the attention of consumer excitement but is not considered an indication of the company’s origin.’ Further, ‘Without being particularly used to it through intensive use on the market, the examiner considers that the requested tone is so basic that if it is heard it will have little or no impact on the consumer.’

The examiner’s assessment, in consideration of the length, tone and complexity of the sound was that the sound is so fundamental that, when heard by the average consumer, will have no or little impact. Any impact that the sound does have, will simply create a connection to the type of products that produce such a sound, without being recognised as indicating Porsche as the origin of the sound. In this regard, ‘the fundamental issue is not so much whether the consumer will perceive the sound of an engine or not, but whether that sound will enable the relevant public to distinguish the applicant’s goods and services from those of other suppliers.’

Porsche’s counterarguments

Porsche argued that ‘the sound is not generated by the vehicles themselves, but is an artificially created, futuristic sound that can be used in various ways for identification, such as when a door is opened or when the vehicle is locked’.

This did not sway the office, who in the assessment of distinctiveness, said that the sound of the mark is not ‘unusual’ when perceived in relation to the goods and services of the application.

Whilst Porsche made the argument that the sound mark was registered as a national mark in Germany under the German Registration DE302022118770 and, by citing BMW’s sound mark, EUTM Registration 18424124, the EUIPO affirmed that the registrability of a sign can only be assessed in accordance with the Union regulations and are not bound by decisions from independent national systems in each Member State party to the unitary system.

In addition, each application must be assessed on its individual merits and the actual circumstances of the case, for reasons of legal certainty and due process.

The decision

By virtue of Article 7(1)(b), the application was refused in its entirety on the basis of non-distinctiveness.

This decision is informative, as it shows that non-traditional trade marks must fundamentally be perceived as indicators of origin (the essential function of a trade mark) and not merely as a functional element of the goods or services. The judgement also reflects the EU’s position that national recognition of a trade mark in a Member State cannot circumvent a refusal at the EU level.

Whilst consumers are not in the habit of making assumptions about the origin of goods on sound alone, which is not commonly used as a means of identification between brand proprietors (in contrast to traditional word and logo marks), the threshold for assessing distinctiveness for sound marks and non-traditional marks is no higher than traditional word or figurative marks.

However, in practice, evidence of acquired distinctiveness through extensive use is nearly always required for these marks to be accepted. This evidence should show that the relevant public perceive the mark as denoting a single trade origin and must be throughout the Union. Given the size and territorial extent of the EU, this is often difficult, time-consuming and costly.

Filing figures of sound marks at the EUIPO

	2021	2022	2023
Number of applications	27	34	25
Registered marks	27	16	18
%	100	47	72

 

The number of trade mark filings for sound marks accounts for just 0.02% of all filings made at the EUIPO. That said, many businesses are turning to sound and non-traditional marks as innovative tools for business propagation. In an increasingly crowded market, brand owners are searching for alternative indicators to differentiate their business and stand out from the crowd.

Porsche will now have the opportunity to appeal the decision.

For further advice on protecting non-traditional trade marks, please get in touch to speak with one of our trade mark attorneys.