Sound Mark Registration Attempt Fizzles Out In EU General Court Appeal

In the first ruling on a sound mark submitted as an audio file (rather than a word description of the sound), the General Court has dismissed the appeal from the EUIPO's rejection of the application for lack of distinctiveness, whilst also clarifying the criteria for assessing the distinctive character of sound marks and the perception of those marks in general by consumers (Ardagh Metal Beverage Holdings v EUIPO (T-668/19) 7 July 2021).

Background

Ardagh Metal Beverage Holdings GmbH & Co. KG applied for an EU trade mark at the European Union Intellectual Property Office (EUIPO) for the sound of a can opening, followed by one second of silence and nine seconds of a fizzing sound. The application was in the form of an audio file and was applied for in respect of various drinks (both fizzy and non-carbonated drinks) and for metal containers for storage or transport.

The application was rejected by the EUIPO, as the sound was not held not to be distinctive. Ardagh appealed the decision to the EU General Court.

The General Court upheld the decision of the EUIPO and provided clarity on the application of earlier trade mark case law on distinctiveness to a sound mark, whilst also refuting some of the EUIPO's application of case law or general approach.

The General Court's decision

• Criteria for assessing the distinctive character of sound marks

The General Court held that the test for establishing the distinctive character of a sound mark is the same as for other types of trade mark. Therefore, in order for a sound mark to be distinctive, the consumer must be able to align the sound mark with its commercial origin, it "must have a certain resonance which enables the target consumer to perceive it as a trade mark and not as a functional element or as an indicator without any inherent characteristics". It must function as an indicator of origin on its own, without any combination of other elements like words or logos or other marks, in order to enable the consumer who purchased the product to repeat the same positive choice, distinguishing the product from others of different undertakings.

• Case law and three-dimensional marks

The General Court commented that the case law that the EUIPO had applied in coming to its conclusion, according to which only a mark that departs significantly from the norm or customs of the sector is not devoid of distinctive character was related to three-dimensional marks. The General Court stated that this case-law is applicable to three-dimensional marks only. It does not establish any new general criteria for assessing the distinctive character of the marks, but simply points out that the perception of the relevant public can be influenced by the (three-dimensional) nature of the sign. According to the General Court, the EUIPO erroneously held that such criteria and case-law could be applicable to sound marks by analogy. Nevertheless this did not change the outcome of the appeal since there were other grounds for dismissing it, including the perception of the mark as a functional element of the goods in question (see below).

• Sounds and commercial origin

The General Court considered whether the sound produced by the opening of a can would be  considered to be a purely technical and functional element, given the type of goods the mark was being applied for. The court held that this would be the case.

"The opening of a can or bottle is inherent to a technical solution connected to the handling of drinks in order to consume them and such a sound will therefore not be perceived as an indication of the commercial origin of those goods".

The court considered that the relevant public immediately associates the sound of fizzing bubbles with drinks, and that the sounds and silence, when taken as a whole, did not have any inherent characteristic that would make it possible for them to be perceived by that public as being an indication of the commercial origin of the goods. The two allegedly "peculiar" features highlighted by the applicant - one second of silence and nine seconds of a fizzing sound – were considered by the General Court as simply nuances and not distinctive enough in themselves from other sounds in the drinks sector. This was sufficient to confirm the EUIPO's finding of lack of distinctive character.

The EUIPO had also found that it was unusual in the drinks market to indicate the commercial origin of a product using sounds alone, on the basis that "those goods are silent until they are consumed". The General Court did not agree with the EUIPO, stating that "most goods are silent in themselves and produce a sound only when they are consumed. Thus, the mere fact that a sound is made only on consumption does not mean that the use of sounds to indicate the commercial origin of a product on a specific market would still be unusual."

Nevertheless, this approach by the EUIPO did not mean that its decision would be annulled as it did not have a decisive influence on the operative part of that decision.

Practice points

It is a well-established trend that in such a competitive market, food businesses are incentivised to invest in new marketing strategies and tools in order to attract consumers - sound marks and other non-traditional advertising activities being examples. They should however be careful not to use sounds that could be considered purely technical and functional element, but instead focus on sounds which could be perceived as an indication of origin if trade mark protection is going to be sought.

Authors and contacts: 

With thanks also to Debbie Olesin for her contribution to this post