EU sound mark applicants should listen up

Brands now have a better idea of what will pass the test after the EU General Court set a new threshold for distinctiveness, explains João Pereira Cabral of Inventa.

On September 10, 2025, the EU General Court (EGC) issued its judgment in the case of Berliner Verkehrsbetriebe (BVG), T-288/24, (ECLI:EU:T:2025:847).

In this decision, the EGC annulled a decision by the EU Intellectual Property Office (EUIPO) which had refused the registration of a sound trademark.

This is an important decision by the EGC, as it sets a threshold example of the distinctiveness required for the protection of sound trademarks.

The EUIPO’s contested decision

The appeal to the EGC was filed against the decision of the Fifth Board of Appeal of the EUIPO of 2 April 2024 (Case R 2220/2023-5). In this decision, the board upheld the decision of the Examining Division, which had refused application no. 018849003 for a sound trademark, filed by BVG, the main public transport company of Berlin, covering transportation services in class 39.

In these decisions the EUIPO applied Article 7(1)(b) of the EUTMR, based on the notions that that the trademark applied for was devoid of any distinctive character, for being “so short and banal that it [had] no resonance or recognisability which would allow the targeted consumers to regard it as an indication of origin and not merely as a functional element or an indication which does not convey a message.”

The board also added that although the mark applied for was “different from other jingles used in the transport sector”, that difference was “not sufficient, on its own, to confer distinctive character on it”, considering that “the distinctive character of a sound mark [was] to be determined solely by the ability of the mark to identify the product or service in respect of which registration [was] sought as originating from a particular undertaking, and therefore to distinguish that product or service from those of other undertakings”.

The Board of Appeal concluded, essentially, that the mark applied for was “extremely short (two seconds) and simple (… four perceptible sounds)” and that, for this reason, that trademark was “not able to convey as such a message which consumers [could] remember” since it would “simply be perceived as a functional sound element intended to draw the listener’s attention to the subsequent announcement or to other aspects of the services covered”.

The EGC’s decision

The EGC starts by noting that it had previously held that a sound sign which is characterised by excessive simplicity and is no more than the mere repetition of two identical notes (here) was not, as such, capable of conveying a message that could be remembered by consumers, with the result that consumers would not regard it as a trademark, unless it had acquired distinctive character through use (judgment of 13 September 2016, Sound mark, T‑408/15, EU:T:2016:468, paragraph 51, EUTM application no 012826368).

Then, the EGC supports its decision to annul the board’s decision mainly in four notions: 1) the common use of “jingles” in the transport sector, 2) the sound not having a direct link with the services covered by the application; 3) the sound consisting of a melody in which four different perceptible sounds follow one another, being sufficiently distinctive, 4) the sound not merely having a functional role.

For the EGC, it is well known that operators in the transport sector increasingly use “jingles” (short sound patterns), in order to create a sound identity recognisable by the public, an audio equivalent of the visual identity of a mark, for the goods and services associated with it, whether in airport terminals or on the platforms of train and bus stations, for advertising purposes or in connection with associated services.

The EGC then added that the sound in question did not have a direct link with the services covered by the application and did not appear to be dictated by technical or functional considerations.

On the other hand, this was the case, for example, of the sound trademark discussed in Ardagh Metal Beverage v EUIPO (judgment of 7 July 2021, T-668/19, ECLI:EU:T:2021:420, EUTM application no 017912475), which consisted of the sound of a beverage can being opened.

In relation to the sound itself, consisting of a melody in which four different perceptible sounds follow one another, the EGC considered it had the purpose to serve as a jingle, a short, striking sound sequence likely to be remembered and that, “despite its brevity, which is a characteristic specific to jingles and is intended precisely to facilitate their memorisation, the sound of the melody of which the mark applied for consists is intended to draw the public’s attention to the commercial origin of the services covered by that mark, in accordance with the customs of the transport sector.”

Then the court found support in the EUIPO’s decision-making practice and on the EUIPO’s examination guidelines themselves. As for the EUIPO’s decision-making practice, the court provided examples of EU sound trademarks that it considered to be analogous: EUTM no. 018800487, owned by Deutsche Bahn and EUTM no. 017396102, granted to Flughafen München GmbH, both from the transport sector.

Regarding the EUIPO examination guidelines, the EGC stressed two examples of accepted trademarks, set out in Part B, Section 4, Chapter 3, point 15, of the EUIPO examination guidelines, stating that: “Those examples indicate that two sound marks were accepted, which consisted, respectively, of the ‘sequence of four different tones, initially falling by a fourth and then rising and ending on the median’ and ‘the first two shorter A notes sound less powerful than the following long and higher C note …’. Such sound sequences are comparable to the sound sequence of the mark applied for, which, according to the Board of Appeal, consists of four perceptible sounds.”

The court then went on to conclude that: “in view of the characteristics of the mark applied for in terms of duration, melody used, perceptible sounds, and the various indications provided by EUIPO in the past regarding the role played by those characteristics in the assessment of the distinctive character of a sound mark for which registration is sought, the Board of Appeal made an error of assessment in finding that the mark applied for lacked distinctive character on the ground that it was ‘extremely short (two seconds) and simple (… four perceptible sounds)”, as “neither the duration of the mark applied for nor its alleged ‘simplicity’ or ‘banality’, which does not in itself prevent the corresponding melody from being recognised, are obstacles which are sufficient, in themselves, to justify the lack of any distinctive character”.

The court then refuted the idea that the sound had merely a functional role, as it did not exclusively serve to get the attention of consumers, for example, in train stations, for future announcements.  The sound had also the very purpose of allowing “the target public to distinguish [a] service and the undertaking concerned from other services which may be offered to it by other operators operating in the transport sector”.

The importance of the decision

Before this decision, all the previous decisions by the EGC or by the ECJ supported the refusal of sound trademarks (Shield Mark, C-283/01; Sound mark, T‑408/15; Ardagh Metal Beverage,T-668/19).

Therefore, none of these could set a threshold of sufficient distinctiveness for sound trademarks. If Shield Mark, C-283/01 dealt mainly with the then relevant graphic representation requirement, the Ardagh Metal Beverage,T-668/19 concerned a sound which was deemed unable to identify the goods in question as those of a specific undertaking and to distinguish them from those of another undertaking as the sound consisted simply of a beverage can being opened. In the case Sound mark, T‑408/15, on the other hand, the EGC decided that a sound sign that is characterised by excessive simplicity and is no more than the mere repetition of two identical notes was not distinctive.

With this new decision, despite not setting the threshold from which distinctive capacity begins, it at least exemplifies a threshold from which distinctive capacity exists (it is not excluded that marks with less distinctive capacity are susceptible to protection).

Therefore, this decision allows the EUIPO to know that sound trademarks with equal distinctive capacity to that of the sound trademark of this case, or superior, should be granted.

If a sound consisting of a mere repetition of two identical notes shall not be deemed distinctive (Sound mark, T‑408/15), on the other hand, in principle, a sound consisting of a melody in which four different perceptible sounds follow one another, shall be.

A question that now arises is whether a sound consisting of a melody in which three different perceptible sounds follow one another shall be considered distinctive.

João Pereira Cabral is a legal manager and trademark and patent attorney at Inventa. He can be contacted at jcabral@inventa.com