18/09/2023
Sound marks are no longer the novelty they once were, and the relaxing of the legal requirements relating to their representation a few years ago makes filing an application for a sound mark easier than ever. However, securing a trade mark registration for a sound still proves to be a challenge, and we see mixed results.
Porsche are the latest automotive company to have its European Union-wide application to register a vehicle sound fall foul of the distinctiveness threshold for registration, despite the sound being registered as a trade mark in Germany.
Acceleration of Sound Mark Applications?
As of 1 July 2019, all new electric and hybrid vehicles are obligated by EU regulation to be fitted with an Acoustic Vehicle Alerting System (AVAS). The introduction of the 2019 EU regulation could be driving the trend of sound mark applications, as automotive manufacturers perhaps see an opportunity to enhance their brand image and differentiate from competitors.
As the EV market continues to grow, and filings of sound mark applications increase, could this eventually drive a shift in the acceptance of sound mark registrations?
Successful Sound Mark Registrations
While there is a growing trend for sound mark registrations in the EV market, companies across a number of industries have previously secured registration by demonstrating that a sound has become synonymous with their brand. Some famous examples include:
● McDonald’s – The fast food giant registered their ‘I’m loving it’ sound mark
● MGM – For the sound of the lion’s ‘roar’
● LG – For the chimes their washing machines make
● Nokia – For their signature ringtone
● Premier League – Successfully secured sound mark registration
Porsche Sound Hits Trade Mark Barrier
The German automotive manufacturer applied to register a 16-second audio file of the sound of the artificial acceleration reproduced on the inside of their electrical models such as the Taycan. The luxury car company applied to protect the sound in relation to vehicles and their parts, toy vehicles and models, as well as non-fungible token (NFT) related goods and services.
However, the EUIPO (European Union Intellectual Property Office) has refused the application on the basis that the sound did not meet the distinctiveness threshold for registration. The Office stated that the synthetic tone lacked complexity and distinctiveness and was not generated by the electrical vehicles themselves. Translated from German, the EUIPO said:
“In order to be able to carry out the assessment of a sound mark, characteristics such as length, tone, complexity and rhythm are an essential part of the examination process. In the present case, and taking into account the necessary elements, the Office has come to the conclusion that the mark applied for is devoid of any distinctive character.”
Porsche have appealed the decision so we suspect this isn’t the last we’ll hear of it.
Legal requirements for Sound Marks
In accordance with the EUIPO trade mark guidelines, a sound mark is defined as a trade mark “consisting exclusively of a sound or combination of sounds”. Therefore, trade marks combining sounds with, for example, movement do not qualify as sound marks per se and should be applied for as multimedia marks.
For a trade mark to be registrable, it is vital that it fulfils the ‘essential function’ and acts as a badge of commercial origin for consumers which allows them to make repeat successful purchases.
When it comes to sound marks, the courts have ruled that there is no higher threshold of distinctiveness compared to any other type of sign. The test for distinctiveness is whether the relevant consumer would be capable of attributing brand origin to the sound applied for. For example, could consumers recognise the McDonald’s brand from the ‘I’m loving it’ jingle? Most probably could, but distinguishing a brand from the AVAS or in this case, artificial sound reproduced in the interior, of an electric car could be more challenging.
At present, consumers are generally not used to relying on sounds alone to identify goods or services as originating from a specific brand owner. But the evolution of marketing and advertising habits means it may become more commonplace in the future.
The Trend of Failure to Register Vehicle Sound
Porsche are by no means the first car manufacturer to submit an electric vehicle engine sound for sound mark registration, nor are they the first to have it declined.
Earlier this year, Italian manufacturer of luxury cars, Lamborghini filed an application for an EU trade mark for the sound of an electric vehicle (rumoured to be a clip of the V12 in pure electric mode).
The EUTM application notably covers “electric cars” and “electric vehicles”. More than half a year later, the application remains under examination, and is still pending. Will Lamborghini be able to get themselves to the chequered flag? Or will they join the ever extending list of car manufacturers that have been refused sound mark registration for the engine sounds of their electric vehicles, including Volvo, Suzuki Motor Corporation and Piaggio?
The big question around this trend of failure is how far do the sounds have to go to reach the distinctiveness threshold. The creativity of the sounds of electric vehicle engines will be somewhat hampered by legislation and brand image, which leaves the question of how EV manufacturers will create engine sounds that can be recognised by consumers.
Final Thoughts
As the EV field grows and more and more manufacturers turn their focus to production of EV vehicles with the requirement for sounds, it will be interesting to see if there is a shift in consumer perception as the use of sound marks increases.
As EVs become increasingly common, will consumers start paying attention to sounds and then go further, identifying them and treating them as brands? While there may be a shift in consumer behaviour, it remains to be seen whether this will lead to greater levels of acceptance and successful registrations at the EUIPO.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
