The Court rules on the registrability of a sound mark presented for the first time as an audio file – Commentary

Facts
EUIPO
Court
Comment

On July 7, 2021, the General Court upheld the decision of the Second Board of Appeal (BoA) of the European Union Intellectual Property Office (EUIPO), stating that the sound of a can of drink being opens, followed by a short silence and a crackling sound, cannot be registered as an EU trade mark (EUTM) due to lack of distinctiveness.(1)

Facts

On June 6, 2018, a manufacturer of glass and metal packaging applied for the filing of a sound mark presented in sound form for metal containers for storage and transport, as well as for various carbonated and non-carbonated drinks. The requested sound sequence consisted of a sound made when a drink can tab is depressed, followed by about a second of silence and a fizzing sound that lasted about nine seconds.

EUIPO

Both the EUIPO examiner and the BoA rejected the application for lack of distinctiveness. The plaintiff brought an action against the BoA’s decision regarding carbonated and non-carbonated beverages.

Court

The Court upheld the BoA’s decision that the sound mark at issue was devoid of any distinctive character. Referring to his sound mark decision,(2) the General Court confirmed that sound marks must have a certain resonance, allowing the intended consumer to perceive them as a mark and not as a functional element or an indicator of intrinsic characteristics. According to the Court, the average consumer must be able to deduce the commercial origin of a product by the simple perception of the sound, without this being combined with other elements such as words, images or even another mark.

The Tribunal confirmed that the submitted sound did not meet these criteria. It found that the sound of a beverage can being opened would be perceived by the average consumer as a purely technical and functional element inherent in the technical solution with a view to its use. Similarly, the fizzing of bubbles is also directly related to drinks. The fact that the fizzing lasted longer than normal and did not start immediately after opening the box did not confer any distinctive character on the sound mark since the average consumer would not be able to associate the sound with the commercial origin of the product when publishing.

However, the General Court rejected the BoA’s view that the criteria for assessing the distinctive character of sound marks are the same as for 3D marks. Based on case law relating to 3D marks, the BoA considered that a sound mark only has distinctive character if it differs “significantly” from the norm or usage in the industry concerned. The General Court recalled that this case-law is based on the consideration that the average consumer will not consider a shape of a product which corresponds to the product itself or to its packaging as an indication of origin if there are standards or customs for the form in question. Thus, the more the shape of the mark matches the shape of the product itself or the packaging in which it normally appears, the more likely it is that the mark will be devoid of distinctive character. A sound mark – unlike a 3D mark – is independent of the shape of the product concerned or its packaging. Therefore, the criteria developed for 3D marks do not apply to sound marks.

According to the General Court, the fact that the sound subject to trade mark protection could only be heard by the consumer after the purchase of the can of drink – namely, when the can of drink had been opened – was not not relevant (EUIPO took the opposite view) . The Tribunal observed that most products are silent until consumed.

Although the General Court refuted EUIPO’s opinion concerning the applicable criteria for the assessment of the distinctive character of a sound mark, its decision was upheld because the General Court shared EUIPO’s opinion that the mark sound presented was devoid of any distinctive character.

Comment

This first decision of the Court relating to sound marks presented in audio form provides useful indications for assessing the conditions of distinctive character that sound marks must meet in order to be registrable. The key element is the perception of the sound by the consumers concerned. Given the fact that, according to the GCs, a sound mark must be able to convey on its own the commercial origin of the goods without the support of verbal elements, images or other marks, it seems quite difficult to overcome the obstacle of distinctive character.

For more information on this subject, please contact Claudia Csaky to GRAF ISOLA Rechtsanwälte GmbH by telephone (+43 1 401 17 0) or by e-mail ([email protected]). The GRAF ISOLA Rechtsanwälte GmbH website can be accessed at www.grafisola.at.

Endnotes

(1) T-668/19.

(2) T-408/15.

Comments are closed.