Sound check: EUIPO dismiss Porsche appeal on accelerating engine sound mark

The EUIPO Board of Appeal has upheld the EUIPO Operation Department's earlier decision refusing Porsche’s application to register a sound mark consisting of an accelerating engine noise.  The mark was refused at first instance as not being sufficiently distinctive. To achieve the required level of distinctiveness the sound mark needs itself to be an indicator of the origin of the goods, not some indication of a function or characteristic of a product.

Following the initial refusal of the mark by the EUIPO, Porsche appealed on several grounds including the fact that;  

• The sound sequence was memorable and served as an indicator of commercial origin;  

• The sound sequence was not noise; naturally produced by goods applied for or in the rendering of services, but was created artificially and specifically comprised a trade mark;  

• Distinctive character is not a requirement for the targeted public to recognise a precise sound sequence; and 

• The public is accustomed to the use of sounds as a trade mark for electrical vehicles 
  and would in turn perceive the trade mark applied for from the outset as an 
  artificially created sound for imparting identity. 

The Board of Appeal (BoA) of the EUIPO dismissed the appeal and confirmed their initial refusal in their decision of 20 June 2024 on the ground of lack of distinctiveness pursuant to Article 7(1)(b) EUTMR. 

In order for a sound mark to be successfully registered, the Board of Appeal said that it must have a certain resonance by which the targeted consumer can recognise it as a specific trade mark and not merely a functional component. A consumer must be able to understand the mark as an identifier of the commercial origin of the good. In this case, the BoA held that the mark was devoid of distinctive character because the relevant public would at most assume that the sound referred to the aspect of acceleration or increase in performance of the vehicles and cars.  

Looking ahead: Sound marks in the automotive industry  

Whilst in principle, sound marks should not be any harder to register than other marks, in practice, sound marks have been more difficult to register, especially where applicants seek to rely on inherent distinctiveness alone.  

Hybrid and electric cars now regularly utilise sound systems to create artificial vehicle noises for several reasons. Initially, pedestrian safety was the main concern and over time, other considerations like brand image and identity have come into play meaning that arguments for sound distinctiveness have become more common.  

Porsche is not the only automotive company in recent times to have its application to register a vehicle sound mark rejected at the EUIPO due to a lack of distinctiveness. In September 2023, Lamborghini also had an application for an EU sound mark for an electric vehicle refused on the same basis.  

The question is how distinctive sounds need to be to meet the threshold for success. Although the sounds are being used for a safety function it is clear that well-known brands would prefer that the sounds of their engines were not used by competitors. If brand owners wish to maintain what they consider to be the allure of the sounds that are generated by the mechanical engines of their high-performance vehicles currently and prevent others using similar sounds on electric vehicles, there will need to be a significant distinctiveness shown beyond the functionality elements, as these cases have generated a high bar. Should new sounds be used for the electric versions of the cars which were more individually distinctive and perhaps stepped away from mechanical engine sounds, this might prove more successful in the short term, but might not be the direction of travel that the high-end brands want to take for now and could defeat the safety aspects in practice.  Nevertheless, over time, it is possible that current engine sounds may meet this threshold once consumers begin to associate sounds with specific manufacturers, although this might require significant brand-education in the meantime and a distinction from any functionality or characteristic element of use.

Anna-Maria Poku