EU General Court: a banal and commonplace ringtone cannot be registered as Community sound mark
The Court has ruled that the ringtone “PLIM PLIM” is too boring to be registered by the European Intellectual Property Office (EUIPO).
A Brazilian company requested EUIPO to register a ringtone as a sound mark for smartphones, tablets and television. It consists of only two G-sharp notes “Plim Plim”. EUIPO refused the application on the ground that it had no distinctive character because it was “a banal and commonplace ringtone which would generally go unnoticed and would not be remembered by the consumer”. The applicants appealed EUIPO’s decision at the EU General Court.
The appeal was not successful. The Court states that sounds may be protected as a trade mark, as long as they are represented graphically accompanied by a clef, rests and accidentals. That was the case. But: the Court also believes that all electronic devices are equipped with the “standard” ringing sound. In this event the public would be unable to attribute the specific ringtone to its commercial origin. For being more vivid the Court refers to television broadcastings. Simple jingles during TV broadcastings would be simply regarded by the public as phonetic expressions of the beginning or the end of a television programme but not as a referral to the advertising company.
The Court holds that EUIPO did not err in their refusal to register because of Plim Plim’s lack of distinctiveness.
This ruling however does not mean that jingles cannot be protected at all. Deutsche Telekom’s jingle or Nokia’s signature ringtone for example were successfully registered as a union sound mark.
While the court had to regard the requirement of graphical representation, from October 1, 2017, sounds will not need to be graphically represented anymore if they are filed for registration under the European Union Trademark Regulation. The amended EU Regulation on Trademarks, which came into force in March 2016, states that sounds and any other signs can be represented in any appropriate form using generally available technology. The representation requires to be clear, precise, self-contained, intelligible, durable and objective. This means, sound marks will not need to provide a music notation.
Fabian Reinholz Tien Nguyen