Sound mark and distinctive character

With the exponential growth of e-commerce, it has also increased the request of sound marks’registrations.

A sound mark may consist of a sound, a jingle, or a musical motif, which is combined with a certain product or service, in order to differentiate and distinguish it from other competitive products.

Among the best known registered sound marks, the mark which distinguishes the launch of the Windows’ operating system and the famous “Tarzan yell” – recorded by the heirs of the actor who played the famous character of the jungle – must be mentioned.
In general terms, a trademark (of whatever type it is) can be registered if it consists of a “sign” (which may be a word, a drawing, a letter, a figure, sound, shape the product or the packaging of it, a combination or a color tone), suitable to “mark ” the product in question and to differentiate it from the others. This is known as the trademark’ distinctiveness requirement.

The European Tribunal has recently stated (judgment rendered in Case T-408/15 on 13th September 2016), that a sound trademark is not registrable if it is similar to a telephone ringing and thus constitutes the mere repetition a couple of notes, similar to a standard ring tone; in such event “…. the public will not be able, without prior knowledge, to identify the ringtone as an element indicating the commercial origin of the applicant’ products or services.”
In essence, the sound mark in question is devoid of distinctive character and therefore unfit to perform the trademark’ typical function.
The judgment appears to introduce a distinction between “banal” sound, as such incapable of “mark” and “distinguish” the product and then to be registered as trademark, and “original” sound, rather suitable to perform its function of brand differentiation.
In fact, according to the Court, the sound considered, because of its trivial character, would be perceived by consumers as a mere functionality of the products marked and not as an indication of their commercial origin.

However, the assessment does not appear to have been performed by the Court following an analytical examination of the individual products considered and of the perception of sound mark in relation to each of them, but on the basis of the simple argument that the mark, as trivial, is not capable of performing any distinctive function at all, regardless to the product considered.
The arguments expressed in the judgment in question gives rise to some perplexities; in fact, in relation to other types of trademarks (word, graphic or shape marks) case laws have always valued the distinctive character of a trade mark concretely, on the basis of the impression that the consumer can derive specifically from the trademark, as matched to the specific product considered.
In this case, instead, the assessment seems to have been formulated leaving aside the exam of a product (or products) and its perception by the costumer and results in a judgment of absolute unsuitability of the trademark, because of its trivial character.
However this approach does not seems to be in line with the purpose of the relevant European regulation (art. 7, b), c), d), e) of European Regulation 207/2009).

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