Nowadays, there are very few (if any) stores where you walk in and don’t hear music playing in the background. This “background music” is what is known as “radio-in-store”.
“Radio-in-store” refers to the commercial activity that consists of arranging a customised playlist, including songs and advertising, which is used like closed circuit radio services in order to create the best musical atmosphere in the context of different commercial environments. Therefore, radio-in-store, is a very useful marketing tool for businesses as it can help them to create a pleasant atmosphere for customers that enhances their shopping experience. Moreover, they can also use it to advertise deals and share their brand message.
Several European Radio-In-Store providers, including Multiradio SRL, an Italian company dedicated to provide, among others, radio-in-store services, received a Google Ads notification according to which the term “RADIO IN STORE” couldn’t be used as a promotional keyword due to the existence of trademark rights recognised under an EUTM registration for the same term.
The EU trademark in question was EUTM no. 018285832 “RADIO in STORE” and its figurative version, depicted below, no. 017983896, both protected in class 38 for “Radio broadcasting; Broadcasting services; Transfer of information by radio; Internet radio broadcasting services; Radio communications”:
This impediment to operate plenty and normally in the market motivated Multiradio SRL to request a declaration of invalidity against the two EUTM (word mark and figurative) based on its descriptiveness (art. 7(1)(c) EUTMR) and non-distinctiveness (art. 7(1)(b)) as the term “RADIO IN STORE” literally informed of the kind of services covered in class 38.
During the invalidity proceedings, abundant evidence was submitted to support the lack of distinctiveness, such as, for example, affidavits signed by managers of undertakings, confirming that the term “RADIO IN STORE” was a literal description of the services offered by them, or articles demonstrating the well-known meaning of the term for all the consumers and companies related to the field, in several EU countries.
In first instance, the EUIPO’s Cancellation Division (CD) rejected the application for a declaration of invalidity: the CD considered that the composition of the three terms “RADIO IN STORE” created an odd expression that did not immediately inform the public about the characteristics of the services. The English-speaking public would perceive it as fanciful and ambiguous.
Multiradio SRL appealed the Cancellation’s decision. The arguments set forth before the CD were reaffirmed, and additional evidence was submitted in order to supplement, complete and clarify the information submitted in first instance. Among other documents, Multiradio submitted an article regarding a conference held on 8 November 2016 at the renown Italian University Bocconi (Milan), addressing the topic “RADIO IN STORE, as a powerful marketing tool”. Additionally, the invalidity applicant showed that the Tariffs of the Italian Collective Management Organisation ( “SIAE” ) included a specific licence fee for the use of musical works, specifically for “RADIO IN STORE” services, which was a relevant indication of genericness of the term.
On the other hand, the EUTM proprietor essentially requested the contested decision to be confirmed and the cancellation applicant’s arguments on the ground of Art. 7(1)(b) and (c) to be dismissed. They also reaffirmed their argument that the sign was protected by Art. 7(3) EUTMR through its use and recognition.
After analyzing the case, the Board of Appeal (R1495/2022-2) annulled the contested decision and declared the EUTM (word and word +k logo version) invalid in its entirety. The Board stated that:
- The expression ‘RADIO IN STORE’ contains obvious and direct information on the function and the intended purpose of the services in question. Indeed, it means the broadcasting of programmes for the public to listen while shopping.
- The meaning of the expression ‘RADIO IN STORE’ is evident and does not require any mental steps. The relevant public will immediately recognise the meaningful and commonly used term ‘Radio’ associated with the meaningful terms ‘in store’ in the abovementioned descriptive sense with respect to the relevant services and will need no additional mental steps to make such connection.
- The link between the sign ‘RADIO IN STORE’ and the services in question is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.
- The EUTM proprietor has failed to provide any direct proof of acquisition of distinctive character
Interestingly, the European trademark “Radio in Store” was annulled in its word version as well as in the figurative version depicted above which, despite the presence of a logo, it was not considered distinctive enough to deserve protection as a European trademark.
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