The General court ruled in Case T‑408/15 Globo Comunicação e Participações S/A v EUIPO. This case concerns the following:
– Class 9: ‘Magnetic data carriers; recording discs; compact discs, DVDs and other digital recording media; computer software; applications for tablets and smartphones’;
– Class 16: ‘Paper, cardboard (raw, semi-worked or for stationery); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, namely sacks, bags, film and sheets; printers’ type; printing blocks, publications; books; magazines’;
– Class 38: ‘Television broadcasting services’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; entertainment services in the form of television programmes; production of television entertainment features[; e]ntertainment services, namely television news, educational, sports and comedy programmes, television soaps, television variety shows; production of television programmes; production of online entertainment’.
The Fifth Board of Appeal dismissed the appeal as regards the alleged distinctive character of the mark applied for and referred back to the examiner the examination of the question raised by the applicant as to whether that mark had acquired distinctive character through use under Article 7(3) of that regulation in relation to the television broadcasting services in Class 38 and entertainment services in Class 41.
The Board of Appeal took the view, in paragraph 24 of the contested decision, that the mark applied for was a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound which would generally go unnoticed and would not be remembered by the target consumer.
Following the contested decision, the applicant made a further restriction on 22 July 2015 by withdrawing, first, the ‘[m]agnetic data carriers ; recording discs; compact discs’ in Class 9 and, secondly, all of the goods in Class 16.
According to the Court’s decision it is necessary for such sounds to have a certain resonance which enables the consumer to perceive them as trademarks and not as functional elements or as indicators without any inherent characteristics.
Consequently, a sound sign which did not have the capacity to mean more than the mere banal combination of notes of which it consists would not enable the 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’, in the sense that, as EUIPO correctly stated at the hearing, it would refer only to itself and to nothing else. It would not therefore be capable of engendering in the target consumer a certain form of attention which would enable him to perceive that sign’s necessary identifying function.
It is important to point out, in that regard, that a sound sign which is characterised by excessive simplicity and is no more than the simple repetition of two identical notes is not, as such, 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 (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22).
Accordingly, the mark applied for will be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of their commercial origin. As the Board of Appeal correctly pointed out in paragraph 24 of the contested decision, the mark applied for will generally go unnoticed and will not be remembered by the relevant consumer.
The mark applied for therefore amounts to the ringing of an alarm or telephone regardless of the context in which it is used and regardless of the medium used and that ringing sound does not have any inherent characteristic which is separate from the repetition of the note of which it consists and would serve to identify anything other than that ringing of an alarm or telephone.
The applicant cited that this mark has a well-known status in Brazil but the Court dismissed that in the light of the fact the EU trademark system is independent and the relevant distinctiveness should be proved on EU territory.
To sum up, the conclusion is that in case of sound marks they should have either sufficient inherent distinctiveness or acquired one on the territory where protection is seeking so as application to be successful.