EUIPO Refuses Registration of ‘Acceleration’ Sound Mark

The EU Intellectual Property Office has refused an application by Porsche to register a sound trade mark (listen here: EUTM Application No. 18795489) on the basis that consumers would simply view it as the sound of a car accelerating and not an indication of trade origin.

Application and Examination

Dr. Ing. h.c. F. Porsche Aktiengesellschaft (‘Porsche’) applied to register a 16 second sound trade mark for various goods and services in Classes 9, 12, 28 and 41 (including vehicles, model vehicles, toy cars, and digital goods and services related to vehicles) on 18 November 2022.

On 4 January 2023 the EUIPO objected to the application on the ground that the mark lacked distinctive character pursuant to Article 7(1)(b) EUTMR and could not fulfil its main trade mark function of enabling consumers to identify a commercial origin.

Porsche filed arguments defending its mark, including:

1. only a minimum degree of distinctiveness is required for a trade mark to be accepted and no stricter requirements should be imposed on sound marks than traditional marks;
2. the sound is an electronically generated musical composition which is futuristic, melodic and memorable;
3. there are examples of other short sounds that are easily recognisable by the public and capable of signifying origin (for example the sound of the Lightsabers in “Star Wars” or KITT’s scanner in “Knight Rider”), and examples of other car manufacturers having successfully registered sound trade marks (for example BMW’s 3 second sound mark (listen here) referred to in this decision, as well as Audi’s ‘heartbeat’ sound (listen here) and a short series of tones for Volkswagen (listen here);
4. the assessment of distinctive character has to be undertaken in the context of the goods and services applied for and here the sound mark is not actually the sound of a vehicle engine or generated by a vehicle itself, but has been artificially created;
5. the same sound mark has already been accepted and registered by the German Patent and Trade Mark Office, and other comparable sound marks have been accepted by the EUIPO for vehicle related goods.

But, in a decision issued 25 August 2023, the EUIPO upheld its objection and refused the application in its entirety.

EUIPO Refusal Decision

The EUIPO agreed with Porsche that a sound mark should not be assessed differently from any other type of mark. However, it qualified this by saying that the perception of the relevant public is not necessarily the same for sound marks as it is for traditional word or logo marks – the public is used to perceiving the latter as commercial indicators of the origin of goods and services but this is not necessarily true for sounds.

When assessing the Porsche sound mark in further detail, the EUIPO found:

• the sound applied for is simple, without complexity or distinctiveness;
• the sequence of tones making up the sound are not unusual and consumers would hear a motor or system starting up, a rapid acceleration followed by a stop in acceleration;
• the sound may have a certain level of attraction but is not memorable and does not point to a particular commercial origin;
• the fact that the sound is artificially created and not produced by vehicles themselves may be known to consumers, but this still does not give them the ability to distinguish the applicant’s goods and services from similar ones offered by other companies.

The EUIPO also stated that the other memorable short sound examples referenced by Porsche were from 80s and 90s television series and films and were well-known in a different context and time with limited consumer choice, which is no longer relevant in today’s world.

Addressing the earlier German registration, the EUIPO confirmed that the EU trade mark system is autonomous and independent from any national EU trade mark system and it is not bound by earlier decisions of any member states or third countries.

The EUIPO did however give a glimmer of hope in suggesting that Porsche’s sound mark could potentially serve to indicate commercial origin in the future if consumers are informed of it through intensive market use or recurrent marketing campaigns.

Commentary

Whilst the general rule is that sound marks should not be assessed more strictly or subject to more hoops than traditional word or logo marks, in practice they are harder to register. This is particularly so where an applicant seeks to rely on inherent distinctiveness alone – evidence of acquired distinctiveness of a sound mark through use can help to get over the line.

This decision reiterates that just because marks have been accepted by a national trade mark office (even within the EU), this does not mean that the EUIPO will view them the same way. This can lead to inconsistent decisions and differing protection across territories.

Porsche appealed this decision to the EUIPO’s Boards of Appeal in early September so we will watch this space.

This article was written based on an unofficial translation of a German-language decision.

For more information or if you have any questions, please contact Laura Tennant (Senior Trade Mark Attorney), Jeremy Dickerson (Partner) or your usual IP team contact.

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