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15 September 2016Trademarks

Phone ring not registrable as EU trademark, says General Court

Neither the ringing of a phone nor an alarm is registrable as a European Union trademark (EUTM) because of their banality, according to the EU General Court.

In a judgment issued on Tuesday, September 13, the court affirmed a decision by the European Union Intellectual Property Office (EUIPO) to refuse the registration of a sound sign intended to be used as the ringing of an alarm or phone.

The EUIPO had rejected the application for an EUTM on the ground that it had no distinctive character.

In 2014, Brazilian company Globo Comunicação e Participações requested that the EUIPO approve the sound sign for classes 9, 16, 38 and 41. In 2015, Globo withdrew its application for the trademark in class 16 and part of class 9.

It then covered class 9 for digital recording media and software, class 38 for television broadcasting services, and class 41 for education and entertainment services in the form of TV programmes.

The EUIPO rejected the application, observing that the mark applied for “was a banal and commonplace ringtone which would generally go unnoticed and would not be remembered by the consumer”.

In May 2015, the Fifth Board of Appeal of the EUIPO dismissed the appeal that Globo had made, ruling that the mark was devoid of any distinctive character.

Globo then brought an action for annulment of that decision before the General Court.

Earlier this week, the court confirmed that all sounds may constitute a trademark as long as they are represented graphically, which was the case here.

“Accordingly, the mark applied for will be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of thei r commercial origin,” said the court.

It added that the standard ringing sound means that the public would be unable to identify, without prior knowledge, that the sound indicates that the goods and services come from Globo.

The mark “does not have any inherent characteristic which is separate from the repetition of the note of which it consists (two G sharps)”, the court said, adding that this would “generally go unnoticed and will not be remembered by the consumer”.

The court ruled that since the mark applied for was devoid of any distinctive character, the EUIPO did not err in refusing to register it.

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