Telephone Ringtone Too Ordinary for EU Trade Mark Registration

Globo Comunicação e Participações (GCP), a leading media group in Brazil, has been refused registration of an EU sound mark. The application, which was filed in April 2014, was represented graphically as musical notes on a stave, accompanied by a clef, rests and accidentals. The application covers "DVDs and other recording media and software" in class 9, "broadcasting services" in class 38 and "education, entertainment and sporting and cultural services" in class 41.

The EU Intellectual Property Office refused the registration of the mark because the sound is banal. The decision was appealed and the EU General Court handed down a ruling on 13 September, agreeing that the sign 'would go unnoticed and would not be remembered by the consumer'.

The current situation regarding the registration of sound marks in the EU is that sound marks are acceptable, provided they are represented graphically. From October 2017 this will change following EU reform and graphic representation will not be essential. This will allow trademark applicants to apply for unconventional marks such as sound, colour, shapes and movements more easily. From October 2017 marks can be represented in any appropriate form using generally available technology.

In this case the Court agreed that the mark had been represented graphically but argued that as with word marks and other types of marks, the mark must be distinctive enough to function as an indication of the good's commercial origin. The applicant argued that the mark applied for is well known in Brazil and that consumers would identify that mark as a distinctive sign of the Globo television channel. However, the Court held that the sound is "the 'standard' ringing sound that is provided with all electronic devices with a timer, and all telephony apparatus. The sound is not distinctive enough to function as an indication of the goods commercial origin."

A number of other sound marks have been accepted as distinctive and successfully registered, including Nokia's ring tone.

If you have any questions on the above please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.