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Sound marks must have a distinctive character

Written by Samuel O'Toole on 22 November 2016

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The decision in Globo Comunicação e Participações S/A v EUIPO T-408/15 has provided some clarification in relation to the registration of sound trade marks.

Globo Comunicação e Participações (Globo) is a media company established in Brazil. Globo had applied to register a sound mark for goods and services in classes 9, 16, 38 and 41 to include amongst others television broadcasting services. A trade mark needs to be represented graphically and as such Globo had represented the mark as a series of notes. For those with a musical mind the mark consisted of a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G sharps.  

However, the examiner found that the mark “consisted of a simple and banal ringing sound and that it could not be perceived as an indicator of the commercial origin of the goods.”. Therefore, under Article 7(1)(b) of the European Trade Mark Regulations the mark was refused registration.

The Board of Appeal agreed with the decision in first instance, explaining that the mark was “a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound with would generally go unnoticed and would not be remembered by the target consumer”.

Therefore, and not surprisingly the proposed mark that consisted of a repetition of two musical notes does not have distinct character and is unable to function as a trade mark.  However, if the mark does acquire distinctive character through use the mark would be able to function as a trade mark.  

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