Union européenne

1

By its action under Article 263 TFEU, the applicant, Berliner Verkehrsbetriebe (BVG), seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 April 2024 (Case R 2220/2023-5) (‘the contested decision’).

2

On 15 March 2023, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the sound sign consisting of a sound of a melody which may be listened to via the following link:

<audio file of the mark applied for>

3

The mark applied for covers services in Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Transport; passenger transport; wrapping and packaging services; storage; arranging of transportation for travel tours’.

4

By decision of 3 October 2023, the examiner refused registration of that mark on the basis of Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

5

On 6 November 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

6

By the contested decision, the Board of Appeal rejected the application for a declaration of invalidity in so far as it was based on Article 7(1)(b) of Regulation No 2017/1001. In essence, the Board of Appeal found that the mark applied for was so short and banal that it had no resonance or ability to be recognised by consumers as an indication of the commercial origin of the services which it covered.

7

The applicant claims that the Court should:

8

EUIPO contends that the Court should:

9

The applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. In essence, it claims that the Board of Appeal did not correctly assess the characteristics of the mark applied for, which are nevertheless typical and consistent with the information provided by EUIPO’s decision-making practice and the EUIPO examination guidelines in relation to sound marks.

10

EUIPO contests the applicant’s line of argument, maintaining that the Board of Appeal correctly found in the contested decision that the trade mark applied for was devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001.

11

Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered.

12

For a trademark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration has been applied for as coming from a particular undertaking, and thus to distinguish those goods and services from those which come from other undertakings (see judgments of 13 September 2016, Globo Comunicação e Participações v EUIPO (Sound mark), T‑408/15, EU:T:2016:468, paragraph 37, and of 7 July 2021, Ardagh Metal Beverage Holdings v EUIPO (Combination of sounds on opening a can of soft drink), T‑668/19, EU:T:2021:420, paragraph 17).

13

Marks devoid of any distinctive character, referred to in Article 7(1)(b) of Regulation 2017/1001, are those which are considered to be incapable of performing the essential function of the trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so if it was negative (judgments of 13 September 2016, Sound mark, T‑408/15, EU:T:2016:468, paragraph 38, and of 7 July 2021, Combination of sounds on opening a can of soft drink, T‑668/19, EU:T:2021:420, paragraph 18).

14

The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, secondly, by reference to the relevant public’s perception of that mark (judgments of 13 September 2016, Sound mark, T‑408/15, EU:T:2016:468, paragraph 39, and of 7 July 2021, Combination of sounds on opening a can of soft drink, T‑668/19, EU:T:2021:420, paragraph 19).

15

A minimum degree of distinctive character is, however, sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 inapplicable (judgment of 13 September 2016, Sound mark, T‑408/15, EU:T:2016:468, paragraph 40).

16

Furthermore, it should be noted that the criteria for assessing distinctiveness are the same for all categories of trade mark, and that Article 7(1) of Regulation 2017/1001 draws no distinction between the various categories. The criteria for assessing the distinctiveness of sound marks are therefore no different from those applicable to other categories of mark (see judgment of 7 July 2021, Combination of sounds on opening a can of soft drink, T‑668/19, EU:T:2021:420, paragraph 23 and the case-law cited).

17

It is also apparent from the case-law that it is necessary for the sound sign in respect of which registration is sought to have a certain resonance which enables the target consumer to perceive and regard it as a trade mark and not as a functional element or an indicator without any inherent characteristics. That consumer must therefore regard the sound sign as having the ability to identify, in the sense that it will be identifiable as a trade mark (see judgment of 7 July 2021, Combination of sounds on opening a can of soft drink, T‑668/19, EU:T:2021:420, paragraph 24 and the case-law cited).

18

While it is true that the public is used to perceiving word or figurative marks as signs which identify the commercial origin of goods and services, the same is not necessarily true when the sign consists solely of a sound element. Nevertheless, it must be noted that, as regards certain goods and services, it is not unusual for the consumer to identify them by means of a sound element. In that regard, it must also be noted that customs in an economic sector are not fixed, but can change over time, in certain circumstances, even dynamically (see, to that effect, judgments of 13 September 2016, Sound mark, T‑408/15, EU:T:2016:468, paragraphs 42 to 44, and of 7 July 2021, Combination of sounds on opening a can of soft drink, T‑668/19, EU:T:2021:420, paragraphs 25 and 26).

19

The applicant’s line of argument must be examined in the light of those considerations.

20

In the present case, the applicant does not dispute the Board of Appeal’s assessment that the services covered by the mark applied for are aimed at the general public of the European Union. There is no need to call that assessment into question.

21

As regards the assessment of the distinctive character of the mark applied for, the Board of Appeal noted that the mark applied for ‘[was] a two-second sound sign, consisting of a simple sequence of four different perceptible sounds’. Accordingly, the Board of Appeal found that the mark applied for ‘[was] so short and banal that it [had] no resonance or recognisability which would allow the targeted consumers to regard it as an indication of origin and not merely as a functional element or an indication which does not convey a message’. In that regard, the Board of Appeal stated that, although the mark applied for ‘[was] different from other jingles used in the transport sector’, that difference ‘[was] not sufficient, on its own, to confer distinctive character on it’, given that ‘the distinctive character of a sound mark [was] to be determined solely by the ability of the mark to identify the product or service in respect of which registration [was] sought as originating from a particular undertaking, and therefore to distinguish that product or service from those of other undertakings’.

22

Accordingly, in order to conclude that there was a lack of distinctive character, the Board of Appeal found, in essence, that the mark applied for ‘[was] extremely short (two seconds) and simple (… four perceptible sounds)’ and that, consequently, that mark ‘[was] not able to convey as such a message which consumers [could] remember’ given that it ‘[would] simply be perceived as a functional sound element intended to draw the listener’s attention to the subsequent announcement or to other aspects of the services covered’.

23

It should be noted, in that regard, that it has previously been held that a sound sign which is characterised by excessive simplicity and is no more than the mere repetition of two identical notes – in that case a sound akin to a telephone ringtone – was not, as such, capable of conveying a message that could be remembered by consumers, with the result that consumers would not regard it as a trade mark, unless it had acquired distinctive character through use (see, to that effect, judgment of 13 September 2016, Sound mark, T‑408/15, EU:T:2016:468, paragraph 51 and the case-law cited).

24

However, as the applicant correctly submits, several factors permit the inference that the characteristics of the mark applied for in terms of duration and resonance make it possible to establish the existence rather than the lack of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 and the case-law cited in paragraphs 12 to 18 above.

25

First, as regards the customs of the economic sector at issue in the present case, it is well known that operators in the transport sector increasingly use ‘jingles’, that is to say, short sound patterns, in order to create a sound identity recognisable by the public, an audio equivalent of the visual identity of a mark, for the goods and services associated with it. Such sound marks can also introduce or accompany messages addressed to the target public, whether in airport terminals or on the platforms of train and bus stations, for advertising purposes or in connection with associated services. Those jingles, of which the applicant has provided a number of examples (see the seventh indent of paragraph 5 of the contested decision), allows the listeners’ attention to be captured in an environment which can sometimes be noisy.

26

Second, it is important to note that the mark applied for consists of a sound of a melody in which four different perceptible sounds follow one another (see paragraph 2 above).

27

The sound of the melody of which the mark applied for consists does not have a direct link with the services covered by that mark and does not appear to be dictated by technical or functional considerations. That sound is not a noise which is usually heard when using transport services, such as, for example, the sound of a passing metro or train, or the sound of an aircraft taking off. Similarly, it has not been established that the sound of the melody of which the mark applied for consists is already known to the public, which gives rise to the presumption that it is an original work.

28

In that context, it may be considered that the purpose of the sound of the melody of which the mark applied for consists is rather to serve as a jingle, that is to say, as the applicant rightly points out, a short, striking sound sequence likely to be remembered. Similarly, it must be held that, despite its brevity, which is a characteristic specific to jingles and is intended precisely to facilitate their memorisation, the sound of the melody of which the mark applied for consists is intended to draw the public’s attention to the commercial origin of the services covered by that mark, in accordance with the customs of the transport sector.

29

Moreover, that assessment is confirmed, as the applicant observes, by EUIPO’s decision-making practice and the EUIPO examination guidelines in relation to sound marks.

30

Thus, the sound of the melody of which the mark applied for consists has a duration similar to the melody constituting the EU sound mark of the German railway undertaking, Deutsche Bahn AG, registered under number 18800487 and which can be listened to via the following hypertext link (<EUIPO – eSearch>), and that melody, like that of Deutsche Bahn’s EU sound mark, has nothing to do with the transport services covered. The same observations may be made in the comparison of the mark applied for with that of the undertaking which operates Munich Airport, Flughafen München GmbH, registered under number 17396102 and which can be listened to via the following hypertext link (<EUIPO – eSearch>).

31

Similarly, two ‘examples of accepted trade marks’, set out in Part B, Section 4, Chapter 3, point 15, of the EUIPO examination guidelines, which, although they lack binding force, may nevertheless constitute a reference source on EUIPO’s practice in respect of trade marks (see judgment of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 38 and the case-law cited), are relevant for assessing the characteristics of the mark applied for. Those examples indicate that two sound marks were accepted, which consisted, respectively, of the ‘sequence of four different tones, initially falling by a fourth and then rising and ending on the median’ and ‘the first two shorter A notes sound less powerful than the following long and higher C note …’. Such sound sequences are comparable to the sound sequence of the mark applied for, which, according to the Board of Appeal, consists of four perceptible sounds.

32

Accordingly, in view of the characteristics of the mark applied for in terms of duration, melody used, perceptible sounds, and the various indications provided by EUIPO in the past regarding the role played by those characteristics in the assessment of the distinctive character of a sound mark for which registration is sought, the Board of Appeal made an error of assessment in finding that the mark applied for lacked distinctive character on the ground that it was ‘extremely short (two seconds) and simple (… four perceptible sounds)’.

33

That assessment is incorrect in the light of both, first, the customs of the sector concerned, in respect of which it is important to be able to use sound to allow the target public to identify the goods and services of an undertaking and accordingly to create a recognisable sound identity and, second, the elements which characterise the mark applied for, which is intended precisely to make an impression on that public as a short and striking jingle that is likely to be remembered and accordingly indicate the commercial origin of the services in question, which will be associated exclusively with the applicant. From that point of view, neither the duration of the mark applied for nor its alleged ‘simplicity’ or ‘banality’, which does not in itself prevent the corresponding melody from being recognised, are obstacles which are sufficient, in themselves, to justify the lack of any distinctive character.

34

Third, the Board of Appeal made a further error when, in support of its assessment that the mark applied for lacked distinctive character, it found that it had ‘merely a functional role’.

35

As regards transport services or passenger transport services, the Board of Appeal noted that ‘it [was] customary to play a short sequence of sounds before loudspeaker announcements providing information on means of transport, in order to draw passengers’ attention to the announcement that [followed] the jingle’ and, furthermore, given that those announcements were generally played in environments with various noises, ‘it [was] not easy for the listener to distinguish the announcement from other background noise’ and to associate it with a specific undertaking before becoming accustomed to it.

36

However, in the present case, it appears, as the applicant observes, that, even if it were necessary to envisage one of the potential uses of the mark applied for as the Board of Appeal did, that is to say, to refer to its use in a train station to announce the associated transport service, such use, even if it has a functional role, would not in any way prevent the mark applied for from performing its function of indicating the commercial origin of that service. That would even be the role of the mark applied for in such a context, given that the very purpose of the sound of the melody which characterises that mark is to allow the target public to distinguish that service and the undertaking concerned from other services which may be offered to it by other operators operating in the transport sector.

37

Fourth, as regards the other services covered by the mark applied for, which did not directly concern transport, but aspects which could be associated with it, the Board of Appeal found that that mark was also not capable of fulfilling its essential function of indicating their commercial origin, given that ‘the relevant public exposed to that very short and simple sequence of sounds in the context of those services … [would assume] at most that the sound [was] linked to certain aspects of the service (for example, the beginning of an announcement) or [that it was] used to advertise those services’. The considerations set out in paragraphs 27 to 36 above are valid, mutatis mutandis, as regards the Board of Appeal’s assessment concerning those other services. In particular, as the applicant correctly submits, it is difficult to understand to which aspects of the services covered by the mark applied for the sound of the melody which makes up that mark may be linked and, furthermore, how the fact that the sound sign applied for may be used in the advertising of those services militates against its registration as a trade mark.

38

Consequently, it follows from the foregoing that the Board of Appeal did not correctly assess the distinctive character of the mark applied for in the light of Article 7(1)(b) of Regulation 2017/1001.

39

Accordingly, the single plea in law must be upheld and the contested decision annulled, without there being any need to rule on the admissibility of the documents produced by the applicant for the first time before the Court in order to establish the advertising uses of various previously registered EU sound marks relating to the transport sector.

40

Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

41

Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby: