2021-07-08

First time in the Court’s history: a decision on a sound mark submitted in audio format!

For the first time in history the Court ruled on the registration of a sound mark submitted in audio format.

On 6 June 2018, Ardagh Metal Beverage Holdings GmbH & Co. KG filed an application as an audio file for a sound mark for goods in classes 6, 29, 30, 32 and 33 (containers of metal, milk, coffee, beers, alcoholic beverages).

The application recalls the sound made by a drink can being opened, followed by a silence of approximately one second and a fizzing sound lasting approximately nine seconds.

The EUIPO rejected the application for registration on the ground that the mark applied was not distinctive. This reject was confirmed by the Second Board of Appeal on 24 July 2019.

On 7th July 2021, the Court confirms EUIPO’s findings relating to the lack of distinctive character of the sound mark (General Court of the European Union, case T-668/19).

No difference to assess the distinctive character of a sound mark

The court recalls that the criteria for assessing the distinctive character of sound marks is exactly the same as for the other categories of marks. In other words, the consumer should be able to associate the sound by its own to its commercial origin and not combine with a word or figurative elements.

The Court however stressed that the perception of the average consumer is not the same as in the case of a 3D-trademark as it does not constitute the exterior appearance or shape of the goods and that, consequently, the criteria of 3D-trademarks are not applicable for sound marks.

The distinctive character of the sound produced by the opening of a can

The court ruled that this sound will be in fact considered, having regards to the type of the goods, to be purely technical and functional element. The sound produced by the opening of the can is inherent to the can itself and therefore cannot be perceived as an indication of the commercial origin of those goods.

The sound effects and the silence following the sound, taken as a whole do not have an inherent characteristic which would make it distinctive.

It is not unusual to use a sound to distinguish the goods contrary to the EUIPO’s finding.

The goods are silent in themselves and produce a sound only when they are consumed, but this does not mean that the use of sounds to indicate the commercial origin of a product on a specific market would be unusual.

Please do not hesitate to contact us for more information regarding the protection of your brand- either a word, logo, graphics, sound or hologram- we would be please to assist you!

Céline PLONKA & Marie-Christine SIMON