Phone ringtone “too banal” to be registrable as EU trademark
The General Court of the European Union has ruled that the standard ringing of an alarm or a telephone may not be registered as an EU trademark (EU TM) on account of its banality. While the EU’s Intellectual Property Office (EUIPO) has allowed “unconventional” signs (such as sounds, colours, smells and holograms) to be registered for some time, the criteria for obtaining such registrations are comparatively complex.
The ruling relates to a 2014 application by Brazilian company Globo Comunicação e Participações to register a sound sign (the ringing of an alarm or a telephone) used for the dissemination of electronic information (e.g. on a smartphone). EUIPO rejected the application on the ground that it lacked distinctive character; noting, in particular, that the sound was “a banal and commonplace ringtone, which would generally go unnoticed and would not be remembered by the consumer”. Globo Comunicação e Participações appealed the decision before the General Court of the European Union; however, the court agreed with EUIPO’s decision in its 13 September ruling.
Are sound marks capable of registration?
The Court makes clear in its ruling that sounds may be registered as trademarks, provided that they are capable of being represented graphically (i.e. in the form of musical notation). However, that mark must fulfil the criteria of trademark registration – in particular, it must be distinctive enough to function as an indication of the good’s commercial origins – in order for such applications to be successful.
In the Globo Comunicação e Participações case, the court found that, as the sound mark applied for only covered the “standard” ringing sound with which all electronic devices are equipped, the public would be unable, without prior knowledge, to identify that ringing sound as indicating that the goods and services came from Globo Comunicação e Participações.
In contrast, a number of sounds have been protected successfully in the past, including the Nokia ringtone, and:
- The 20th Century Fox fanfare
- The McDonald’s “I’m lovin’ it” jingle
- Rue’s 4-note whistle (from the film The Hunger Games)
- The Macintosh start-up chime
- Darth Vader’s breathing
- Homer Simpson’s “D’oh”
- MGM lion’s roar
Although it’s important to note that the approach to even these registrations has not been consistent – some were accepted in certain jurisdictions, only to be rejected in others – highlighting how much variation there is when it comes to registering and upholding sound marks.
For more on registering sound marks in the EU and in national systems, speak to your Novagraaf attorney or contact us.Tweet