In its first ruling on the registration of sound marks in audio format, the General Court has rejected the sound of a drinks can opening, followed by silence and a fizzing sound (Ardagh Metal Beverage Holdings v EUIPO T-668/19).
Since October 2017, when the EU Trade Mark Regulation (2017/1001) came into effect, it has been possible to register sound marks (defined as trade marks consisting exclusively of a sound or a combination of sounds) as EU trade marks (EUTMs). Applications for sound marks have to be submitted either in an audio file reproducing the sound or by an accurate representation of the sound in musical notation. The General Court has given its first decision on a sound mark submitted in an audio format.
The Germany company, Ardagh Metal Beverage Holdings GMBH & Co. KG, filed a EUTM application in June 2018 in classes 6, 29, 30, 32 and 33. It submitted a sound file for a sound described as a drinks can being opened, followed by a silence of approximately one second and a fizzing sound lasting approximately nine seconds. The goods covered were various drinks and metal containers.
The EUIPO rejected the application on the basis the mark was not distinctive and the Second Board of Appeal agreed with this decision. On 7 July 2021, the General Court gave its decision in a judgment which is not currently available in English, but there is a press release in English.
General Court's decision
The General Court stated that the same distinctiveness rules apply to sound marks as to other types of marks. A sound mark must enable the relevant consumer to see it as a trade mark indicating commercial origin. A sound must not be a functional element or be non-distinctive. The relevant consumer must be able by regarding the sound on its own (without it being combined with other marks such as words or logos) to identify the commercial origin of the goods in question.
The EUIPO had previously applied to sound marks case law relating to the registration of 3-dimensional marks. The General Court disagreed with this and held that this case law was inapplicable. However this was not sufficient to overturn the decision.
The General Court also rejected the EUIPO's finding that it was unusual that sounds on their own could indicate the commercial origin of drinks or their packaging on the basis that drinks products are silent until they are consumed. This was also not sufficient to overturn the decision.
However, the court regarded this sound as representing a functional element of the relevant goods. The sound of a can opening was a technical and functional element necessary to consume drinks and therefore the sound could not indicate commercial origin.
It also found that the relevant public would associate the sound of fizzing bubbles with drinks in general. The sound elements (including the silence of one second) was not distinctive enough to be regarded as indicating the commercial origin of goods and distinguish it from similar sounds in the drinks field. This sound was therefore not distinctive.
Helpful guidance has been given in this case as the General Court has for the first time clarified the basis for assessing the distinctive character of sound marks and how those marks are perceived in general by consumers. It rejected the idea of applying existing case law on the registration of shape marks to sound marks, although as anticipated it seems that as for shape marks, registering sound marks in audio format is not going to be easy.
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