Sound barrier: Porsche denied TM for electric car noise

EUIPO refuses to register sound mark for Porsche electric vehicles due to being ‘devoid of any distinctive character’ | Rejection comes as a string of luxury car makers attempt to recreate engine sounds in new-generation EVs.

To a luxury automaker that prides itself on its distinctive engine sound, the relative silence of electric cars (EVs) is a clear disadvantage.

Which is why some car brands are beginning to do something about that—or at least attempting to.

In a judgment handed down on Friday, August 25, the EU Intellectual Property Office refused to register a sound mark applied for by Porsche—a sound with which to identify its EVs, such as the Taycan.

This is despite the mark being already registered at the DPMA (the German Trade Mark and Patent Office, under number DE302022118770), according to Porsche.

The luxury car maker says its applied-for sound mark (which can be downloaded here or heard in a sound file within the EUIPO filing) is “a musical composition with electronically generated tone sequences” and “is without a doubt protectable as a sound mark.”

Porsche argues that the sound is “intended to attract the attention of consumers”, but the EUIPO did not agree.

The office said: “Without being particularly used to it through intensive use on the market, the examiner considers that the requested tone is so basic that if it is heard it will have little or no impact on the consumer.”

Noting that characteristics such as length, tone, complexity and rhythm are an essential part of the assessment process in order to be able to carry out the assessment of a sound mark, the EUIPO concluded that “the mark applied for is devoid of any distinctive character”.

Porsche: ‘an artificially created, futuristic sound’

Porsche describes the sound as “a wave-like sequence of notes” that are “memorable and unusual".

There is “no reason to interpret the sound sequence as engine noise”, it went on. “The sound is not generated by the vehicles themselves, but is an artificially created, futuristic sound that can be used in various ways for identification, such as when a door is opened or when the vehicle is locked.”

But the office said in its judgment: “The sound of the mark would certainly not be perceived as unusual in relation to the goods and services applied for…”, which were “digital goods, vehicles and their parts, model vehicles or toy cars, and digital services”.

According to the EUIPO, “it is a sound that, although not realistic, mimics the sound of an internal combustion engine accelerating until it reaches the desired speed.

“However, the fundamental issue is not so much whether the consumer will perceive the sound of an engine or not, but whether that sound will enable the relevant public to distinguish the applicant's goods and services from those of other suppliers.”

Comparable applications

In its arguments to the EUIPO, Porsche noted that comparable sound marks in class 12 include BMW’s UM 18424124.

Not mentioned by Porsche is an application made in January by Lamborghini to register a V12 hybrid engine sound for its EVs, which is pending at the EUIPO and possibly at other European IP offices.

And, possibly in an attempt to circumvent the problem with trademarking sounds, Ferrari has applied to patent (in the US) an external audio system from which to broadcast ‘authentic’ internal combustion engine sounds.

Michael Hawkins, a partner at Noerr based in Spain, pointed out that there have already been a few refusals by the EUIPO of sound marks by automotive companies, on the basis that they could be perceived as a standard sound of an engine.

This includes applications for EVs, regardless of whether or not those sounds are produced by the engine itself or are electronically generated.

“The EUIPO seems to be acknowledging that the electric vehicle market is fast-moving but that there are still many consumers who do not understand, or at least do not tend to analyse, the technicalities of electric vehicles,” he told WIPR.

Consumer recognition

Lee Curtis, partner and chartered trademark attorney at HGF in the UK, chimes with this view, noting that sounds tend to be more difficult to register than word and logo trademarks in the EU, since consumers generally find it hard to see sounds as trademarks.

“This would be particularly the case with the engine noise of an electric car, so I have some sympathy for the EUIPO’s position [regarding the Porsche decision],” he told WIPR.

Because sounds are ordinarily only registered on the basis of high use and, since EVs are still relatively new to the market, consumers need time to distinguish their different sounds, explained Curtis.

“However, it strikes me that with the rise of electric cars, car manufacturers could use sounds to differentiate their products more and thus the registration of such sounds in this field could rise.”

Registering a sound mark at the EUIPO

So how difficult is it to trademark sounds and how can a company convince an IPO to register them as trademarks?

“The EU General Court has in several judgments confirmed that the criteria for assessing the distinctiveness of sound marks are no different from those for, for example, word or figurative marks,” explained Hawkins.

“In particular, the requirement—established for 3D marks—that the mark ‘depart significantly from the norms or customs of the sector’ has been held not to be necessary for sound marks.

“This said, sound marks must still be distinctive, enabling the consumer to regard them as a trademark and not as a functional element or as an indicator without any inherent characteristics.”

Hawkins also noted that while the EUIPO has registered nearly 300 sound marks, it has refused about 60 to 70, “so statistically it is still more likely than not that a sound mark would be registered”.

He added that as per EUIPO practice, a sound mark should be neither too short nor too long to be memorable by consumers of the relevant market.

“There is, to put it another way, a ‘Goldilocks length’ for sound marks to operate as a badge of origin.”

Applicants should also ensure that there is something unusual about the sound in respect of the relevant goods or services, and define those in a narrow way in order to avoid, or help navigate around, a potential refusal, he added.

Driving new protections

According to Curtis, engine sounds for EVs could mark a new era for trademark protection.

Could this be the case?

“Definitely,” said Hawkins, “given the growing legal requirements for electric cars to have acoustic alerting systems.

“This is a great opportunity for automotive companies to further distinguish their products on the market, and ultimately make their products more attractive to consumers.

“Trademark offices will surely follow suit and allow the registration of those sounds tha3t function as a badge of origin.”

Pointing out the fact that the low noise levels of EVs are both a pro and a con, Curtis asks why a manufacturer should not use a distinctive sound to brand a car.

“This might also mean that the connection between the function of a car and its sound would be broken, making it more likely that such sounds could be registered as trademarks,” he said.

“It might sound facetious, but at the extreme maybe Volvo could adopt ABBA for the sound of its cars, or General Motors could be distinguished by a bit of Bruce Springsteen as it moves around the car park of the local supermarket, subject to copyright clearance of course.”

Added Curtis: “I am sure that car manufacturers could come up with other distinctive sounds for their electric cars, although I suspect they would be wary of using my examples.”

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