Recently, the EU General Court issued a decision that could perhaps be an important development for sound as trademark in the EU. The decision concerned a two-second jingle submitted by BVG, Berlin’s main public transport company, for registration as a sound mark under Class 39 services (transport, passenger transport, and related logistics service). Initially, the EUIPO rejected their application, finding the jingle too simple and short to serve as an indicator of commercial origin under Article 7(1)(b) of the EU Trade Mark Regulation (EUTMR). The Board of Appeal upheld this decision, reasoning that the sound was simple and likely to be perceived merely as a functional signal rather than a distinctive sign.
The applicant however, provided further arguments. First, that in transport sector, jingles are used to build brand identity. They capture attention in noisy environments, such as stations or airports, and help consumers associate sounds with specific companies.
Furthermore, the applicant argued that the simple melody has no direct or functional link to transport services, and is not a sound normally heard during travel like engine sounds or, announcements. It is also original and not previously known to the public. Therefore, its function is to be a memorable jingle that indicate commercial origin.
Lastly, they also pointed out that the jingle’s duration and composition are similar to previously accepted EU sound marks, notably those registered by Deutsche Bahn AG and Flughafen München GmbH. They even discovered that EUIPO’s Examination Guidelines list comparable accepted examples, such as sequences of four different tones—implying that short and simple sound patterns can possess distinctiveness.
Ultimately, EU General Court sided with the applicant and overturned this decision. The Court found that the EUIPO’s Board of Appeal had misapplied Article 7(1)(b) of Regulation 2017/1001 by wrongly concluding that the sound mark lacked distinctive character—ruling that that brevity and simplicity do not automatically preclude distinctiveness and affirming that the sound mark possessed sufficient distinctive character to merit protection.
The Court accepted the applicant’s arguments, including that that the Board failed to consider the customs of the transport sector, where short sound jingles are commonly used to create a recognizable brand identity. They also agreed with the applicant that the applicant’s two-second, four-tone melody was original, non-functional, and capable of being remembered by consumers, thereby fulfilling the essential function of a trade mark (identifying commercial origin), while emphasizing prior registrations of similar short sound marks, such as those of Deutsche Bahn and Munich Airport.
This decision is an important development in EU trademark law, as it confirms that even extremely short and simple sounds can be registrable trademark, which could lead an increase in sound mark applications, as it sets the precedent for similarly simple sounds to be registered, while also could be invoked to support the registrability of more complex sound marks in the future.
The Indonesian Framework: Recognition of Sound Marks under Indonesian Law
Indonesia has also recognized sound to be registrable as trademark. According to Article 1(1) of Law No. 20 of 2016 on Marks and Geographical Indications (UU Merek), a trademark is defined as:
“A sign that can be represented graphically in the form of an image, logo, name, word, letter, number, color arrangement, in two-dimensional and/or three-dimensional form, sound, hologram, or a combination of two or more of these elements, to distinguish goods and/or services produced by individuals or legal entities in trade.”
Typically, marks are classified into traditional (word marks, logos, and designs) and non-traditional categories. The latter includes three-dimensional marks, holograms, and sound marks — and, in some jurisdictions, even scents, tastes, textures, and motion marks. Under Indonesian law, only certain non-traditional marks are currently registrable — specifically, 3D marks, holograms, and sound marks.
Furthermore, to ensure clarity of representation, Article 3 of the Ministry of Law and Human Rights Regulation No. 67 of 2016 requires applicants to submit materials that depict the characteristics of the mark. For sound marks, the applicant must provide a musical notation and a sound recording. If the sound cannot be expressed through notation, a sonogram (visual representation of sound waves) may be submitted instead.
Conclusion
In the digital and sensory age, branding extends beyond visuals to encompass sounds that evoke immediate recognition and emotional connection. From jingles, melodies to songs, these are effective tools to build your brand’s identity. For more questions on this topic and other IP related inquiries, contact us at ambadar@ambadar.co.id
Source:
https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex:62024TJ0288
