Trademarks can take many forms, including words, logos, devices, product shapes, colors, scents, tastes, and sounds. Cars can take many forms, too, but anyone familiar with a Porsche will know that it has a very distinctive sound. It is not the typical “vroom vroom” sound of other cars. Instead, it is quite different and distinct. With that in mind, the company that manufactures Porsche, Dr. Ing. h.c. F. Porsche Aktiengesellschaft, applied to register the sound of a Porsche engine as a trademark back in 2019 – albeit without much luck.
Porsche’s trademark application for registration – which comprises 16 seconds of accelerating engine noise and covers automotive-related products and services in classes 9, 12, 28 and 41 (vehicles fall into class 12) – was refused by the European Union Intellectual Property Office (“EUIPO”). The refusal prompted Porsche to file an appeal to the Board of Appeal (“BOA”) of the EUIPO, in furtherance of which the German automaker sought to overturn the trademark office’s determination.
Some of the grounds of Porsche’s appeal included: (1) The sound sequence involved here is memorable. It evokes strong emotions and ideas. It is able to act as an indicator of commercial origin; (2) The sound sequence is not random noise. It is a sound sequence created artificially. It is very much intended to be an indicator of origin; (3) The sound sequence involved here has nothing to do with the sound of an internal combustion engine; and (4) The public is accustomed to the use of sounds as trademarks for electrical vehicles. The public will perceive the trademark applied for as an artificially created sound for imparting identity.
The Decision of the BOA
In a decision in June, the BOA dismissed Porsche’s appeal. In other words, the Board upheld the EUIPO’s refusal to register the sound as a trademark based on lack of distinctiveness – the relevant provision is Article 7(1)(b) of the EU Trade Marks Regulation. In justifying its decision, the BOA said that “the requested sound sequence represents a characteristic typical of electric vehicles, namely the acceleration or improvement of their performance until they reach the desired travelling speed.”
Is the Decision Correct?
Reflecting on the BOA’s decision to uphold the refusal, Eversheds Sutherland lawyer Anna Maria Stein asserted that for a sound mark to be registrable it must have a “certain resonance, by means of which the targeted consumer can recognize it and interpret it as a trademark and not merely as a functional component or as an indicator without any intrinsic characteristics. To be registered as a trademark, the targeted consumer must understand a sound sign as an identification of the commercial origin of the goods/services.” At the same time, she stated that when it comes to goods of this nature (presumably expensive cars) the level of attention by potential purchasers will be “above average.” Despite this, “the level of attention paid by the relevant public cannot have a decisive influence on the legal criteria used to assess whether a sign is descriptive or devoid of distinctive character.”
Stein further claimed that “the mark applied for in this case is ‘a sound of a total of 16 seconds … followed by an electronically generated, intensified barrel-reinforcing sound sequence, with the last three seconds in turn being practically meaningless.” The BOA concluded that “the relevant public will at most assume that the sound refers to the aspect of acceleration or increase in performance of the vehicles and cars, which is why the sign is devoid of distinctive character.”
Finally, she noted that Porsche is not the only car maker that has had an application to register a sound mark rejected by the EUIPO based on non-distinctiveness. In 2023 Lamborghini’s application to register the sound of an electric vehicle was rejected by the EUIPO on the basis of lack of distinctiveness, despite the fact that the sound is registered as a trademark in Germany.
Ilse du Plessis is an Executive at ENS in the Intellectual Property practice. She specializes in trade marks, copyright, and other IP matters.
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