Hitting the right note: Sound trademarks at the EUIPO

Sound marks continue to spark the interest of brand owners—particulary in competitive sectors such as food—but successful registration relies on inherent distinctiveness, explains Joana Fialho Pinto of Inventa.

Sounds transcend languages, facilitating emotion and engagement without barriers. Marketers and advertisers understand and leverage this power in promoting goods and services. However, only sounds that fulfil the essential distinctive function can be registered as trademarks.

Investing in sound

A search at the EU Intellectual Property Office (EUIPO) database reveals a significant collection, with 532 cases of EU sound trademarks and international sound trademarks designating the EU. Over half (319) are active registrations, indicating the acceptance and importance of sound as a distinctive market sign and also showing the investment in protecting such trademarks.

Nonetheless, criteria that initially focused on the formalities of sound representation and now primarily address distinctiveness have already led to 81 refusal decisions. Additionally, there are 68 expired registrations, 28 withdrawn applications, and eight international trademarks removed.

There is noticeable current interest in the protection of this type of EU trademark, with 28 active cases: 16 are in the challenging examination phase, where absolute grounds for refusal, including distinctiveness, are assessed. Ten applications have already been published, and two initially refused for lack of distinctiveness are under ongoing appeals, whose decisions will certainly provide more context for future examinations of such non-traditional trademarks.

Audio file or notation

A great deal of debate has in the past surrounded the representation (initially graphical) of EU sound trademarks. Technological advancements have allowed us to define the requirements for clear and precise representation. As early as 2005, the EUIPO—then  OHIM  (Office for Harmonization in the Internal Market)—established criteria for accepting electronic files for sound trademark filings.

Currently article 3(3)(g) EUTMIR defines sound marks as consisting exclusively of a sound or combination of sounds and expressly provides that EUTM applications for sound marks can only be submitted as an audio file reproducing the sound or an accurate representation of the sound in musical notation.

Choosing between the two possible representation forms may still be relevant—opting for an audio file may offer clearer, more specific protection, whereas musical notation can cover a broader range of expressions without specifying instruments. This may be relevant for the scope of the right and future situations like proving use.

When choosing representation, it is also relevant to keep in mind if the EUTM is to be the basis for international registration via the Madrid Protocol and ponder which form eases processing across designated parties.

EUIPO guidelines remind us that times have evolved, expressly mentioning that sonographs—which at one time needed to accompany sound files—are no longer accepted and, if added, will be removed from the file by the office.

Consumer perception is key

Today, the emphasis is on the inherent distinctiveness of the sound itself. There is no specific provision for the distinctiveness of sound  trademarks. The rule is the same as for traditional trademarks, as set out in Article 4 of the EUTMR, which states (in addition to the representation requirement) that “an EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

What is crucial, given that sound is not a traditional trademark, is the different predisposition of relevant consumers to perceive a sound as a trademark. Depending on the sector, this can lead to a more or less stringent threshold for a sound sign to be considered distinctive. This varies on a case-by-case basis and considering the different sectors.

As highlighted in the EUIPO’s guidelines, in competitive sectors like the food market, companies are more motivated to use sound marks to distinguish and promote their products. In this context, it can be argued that consumers of food products, exposed to such a market reality, will then be more predisposed to perceive a sound as a trademark.

In other cases, the nature of the services may make sound signs more naturally perceived as distinctive trademarks, such as the sound signal identifying a radio station.

A key element to consider is, of course, the sound signal itself. EUIPO guidelines highlight general examples of sound marks “unlikely” to be accepted without evidence of factual distinctiveness, such as:

• Very simple musical pieces with only one or two notes
• Common domain sounds (eg, La Marseillaise, Für Elise)
• Sounds too lengthy to indicate origin
• Sounds typically associated with specific goods/services

These examples are reflected in previously issued decisions, such as the case of the beautiful Italian song verses filed as EUTM application No. 018666378  being refused because the sign’s long length and complexity were considered barriers for the EU public to recognise it as indicating the origin of goods or services.

Other marks, such as EUTM No. 017622663, were refused registration for being very short. In this example, it was also considered that any dynamic characteristics would rely on repeated listening and an analytical approach, which the consumer does not typically adopt.

A different example leading to a refusal decision, not concerning the sound’s duration, is the case of EU trademark no. 017912475, whose registration was refused as it comprised merely “classic sounds made by drinks when their container is opened”, perceived as “mere variants of the usual sounds”, and the signal’s specifics, such as pause and duration, are “not sufficiently resonant to distinguish them from comparable sounds”.

As highlighted earlier, there are numerous cases where marks were considered inherently distinctive and were granted registration, such as the case of EU trademark no. 017396102, noted in the EUIPO guidelines as “The sign is short but it is not too simple and is capable of being memorised by the relevant consumer.” Furthermore, there is the possibility of proving acquired distinctiveness, as in the case of EU trademark no. 008293557.

EUTM no. 008293557

The assessment of distinctiveness of sound trademarks, like traditional trademarks, is conducted on a case-by-case basis, considering the specificity of the signal, the covered products/ services, and consumer perception, which also evolves over time.

Given these are non-traditional trademarks, fewer cases exist, providing limited examples of decision-making trends.

On a related note, it is interesting to consider the nuances involved in comparing sound trademarks during trademark opposition cases. The lack of cases and decisions hinders guidance on interpretive standards, which may discourage litigation and encourage settlements. An example is the opposition to EU trademark application no. 017877195, which was concluded as the applicant removed the contested products from the application.

EUTM no. 017877195

In this context, the harmonisation effort undertaken not only in the EUIPO guidelines but also within the framework of the European Union Intellectual Property Network (EUIPN), which includes the EUIPO and various trademark offices within the EU, is noteworthy. A specific example of this harmonisation effort is the Common Practice (CP11) New Types of Marks: Examination Of Formal Requirements And Grounds For Refusal, which also contains hypothetical examples of comparisons between sound marks and between sound marks and other types of marks.

It is, of course, essential to always consider the specificity of each individual case and the evolving perceptions of consumers. The recognition of sound marks as trademarks in the EU has been growing, underscoring their importance as distinctive commercial identifiers. Always being relevant to keep in mind that sound trademark registrations aim not to protect the sound or music themselves, but rather their function as distinctive commercial signs.

Joana Fialho Pinto is a trademark and patent attorney at Inventa. She can be contacted at jfpinto@inventa.com