An accelerating engine noise is not inherently distinctive, says EUIPO

The EUIPO’s Operations Department (OD) has recently considered whether the sound of an accelerating engine noise can be registered as an EU trade mark (EUTM).

The application for this sound mark was filed by Porsche. Porsche claimed protection for goods and services in Classes 9, 12, 28 and 41, including digital goods, vehicles, model vehicles, toy cars, as well as digital services. The OD rejected the application based on Art. 7(1)(b) EUTMR (lack of distinctiveness). According to the OD, the sound applied for is short and simple: it will not be perceived by consumers as an indication of origin.

When replying to the examiner’s initial objections, Porsche representatives argued that the sound applied for is not a real engine noise, but rather an electronically generated tone sequence that is futuristic and melodic. They also sustained that no stricter requirements are to be imposed on sound marks with regard to the degree of distinctiveness: a minimum of distinctiveness is sufficient for registration.

Porsche gave the example of some famously recognisable sounds, such as the KITT scanner from the “Knight rider” or the sound of lightsabers from “Star Wars”. Moreover, commercials with sounds are popular in the automotive industry, so the consumers are used to perceive sounds as an indication of origin.

In response to these arguments, the OD observed that, although the sound is electronically generated, it still mimics the sound of a real combustion engine. The sound does not contain any conspicuous or memorable elements for the consumer to associate it with a specific commercial origin.

The OD also replied to the Porsche’s arguments regarding “Knight Rider” and “Star Wars” sounds. The selection of 1980s or 1990s television shows was limited. Consumers were more exposed to each of the existing shows then, hence the effect it had on that generation. However, the OD further observed, this is no longer the case.

According to the OD, the sound applied for is simple, without complexity or distinction. It is true that no stricter requirement of distinctiveness is imposed on sound marks. However, this sound alone is unlikely to be recognised by the relevant consumer as an indication of origin. The situation may change if the sign acquires distinctiveness through intensive market use or repeated marketing campaigns.

Though not mentioned in the OD decision, the same criteria were applied by the General Court in the recent past when denying the registration of the sound of opening a can of soft drink (T-668/19 and a comment by The IPKat here).

Since the EU trade mark reform in 2015 and the abolishment of graphical representation requirement, it became easier (at least in principle) to register sound marks. However, not many sounds have been registered in Class 12, with most of them being marketing jingles.

Porsche may now challenge the OD decision in front of the EUIPO’s Boards of Appeal [update: the appeal has effectively been filed on 6/09/2023 (R1900/2023-5)]. In the meantime, this Kat is amazed by the artistic decisions in the recent “Ferrari” movie trailer: it consists almost exclusively of the engine sound. Would Ferrari be potentially any luckier in claiming acquired distinctiveness?