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Sound of a standard alarm or telephone ring too 'banal' to be a trade mark, says court

The standard sound of a ringing telephone or alarm – two G sharp notes – cannot be registered as a trade mark because it has no distinctive character, the EU's General Court has said. 13 Sep 2016

Brazilian company Globo Comunicação e Participações (GCP) had asked the EUIPO (European Union Intellectual Property Office, formerly OHIM) to register the sound as a trade mark.

GCP wanted to trade mark the sound for use across recordings, paper and printed matter, television broadcasts and education services. However, EUIPO refused, on the grounds that the sound had "no distinctive character". It was a banal and commonplace ringtone that would not be remembered by the consumer, it said.

Following an appeal by the company, the General Court confirmed EUIPO's decision.

The court said that sounds may constitute a trade mark if they can be represented graphically. However, this sound is the 'standard' ringing sound that is provided with all electronic devices with a timer, and all telephony apparatus. The public, therefore, would be unable to identify it as belonging to GCP, it said.

Intellectual property expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "The court has made a sensible decision regarding this mark as to where the boundaries lie."

"Trade marks have to be able to distinguish the goods and services of one undertaking from those of another. Therefore, whether it is words, shapes or sounds, there are basic requirements in place to ensure that commonplace, everyday signs remain free for the world to use," Connor said.

Recent reforms to EU trade mark laws could change what can be registered. One of the main changes will be the removal of the need for a trade mark to be capable of graphic representation.

According to a non-binding recital set out in the new regulation "a sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective".