2021/09> Registration of sound trade marks under Regulation (EU) 2017/2001: what is the mood music from the European judge?
On 7 July 2021, the European General Court (EGC) dissmissed the appeal brought by the German company Ardagh Metal Beverage Holdings GmbH & Co KG against the 24 July 2019 decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) refusing to register the sound trade mark it had filed (EGC, 7 July 2021, T 668/19) (1).
It is recalled that a sound trade mark is a trade mark consisting of a sound or combination of sounds. Article 4(b) of Regulation (EU) 2017/1001 of 14 June 2017 requires that the sign applied for as a trade mark must be represented in the EU Trade Marks Register in such a way as to enable the competent authorities and the public to determine precisely and clearly the subject matter benefiting from the protection conferred on its owner.
When this sign is a sound trade mark, usually its filing was, before the adoption of the above-mentioned new Regulation 2017/1001, made in graphical form, most of the time as a score.
Thus, for example, MICROSOFT is the owner of a European Union sound mark n° 018132058 represented as follows:
As the need for a graphical representation has been abandoned with Regulation 2017/1001, it is now possible to file in the form of an MP3-type audio file. This is provided for in Article 3 of the Commission Implementing Regulation (EU) 2018/626 of 5 March 2018.
On 6 June 2018, Ardagh Metal Beverage Holdings GmbH & Co KG therefore filed with the EUIPO a sound trade mark n° 017912475 for beverages, in the form of a 14-second audio file consisting of the sound of a beverage can opening, a one-second silence and finally nine seconds of a fizzing sound.
Listen to the sound trade mark n° 017912475:
This application was rejected on 8 January 2019 by the Examining Division on the ground that the sign could not be perceived as identifying the commercial origin of the product. The applicant then appealed to the Board of Appeal of the EUIPO and later to the General Court of the European Union, both of which appeals were dismissed.
The Board of Appeal considered that, in order to be registered as a trade mark, a sound must have a certain significance or capacity to be recognised, so that it can indicate to consumers the commercial origin of the goods or services in question.
As for the European General Court this is the first time it has ruled on the registration of a sound trade mark filed in audio format. It takes the opportunity to provide some clarification on the notion of distinctive character attached to these particular marks which, like all trade marks, must be capable of identifying (via sound) the origin of the goods or services they designate.
The sound trade mark shall, in fact, make it possible to determine the commercial origin of the goods and services for which it is registered and to distinguish them from goods or services marketed by other owners. The assessment of this condition of validity is carried out on the one hand according to the goods and services designated and on the other according to the perception by the relevant public of the sign registered as a trade mark.
The Court of First Instance insists first of all on the principle that the criteria for assessing the distinctive character of sound trade marks are the same as for other trade marks. The Court then states that the perception of the average consumer is nevertheless not the same, depending on the type of trade mark concerned, and cited the example of the three-dimensional trade mark.
The applicant argued in this matter that the Board of Appeal had started from the presumption that the trade mark applied for had to diverge significantly from the norm or practice of the sector in order to fulfil its function of indicating the commercial origin of the goods in question, whereas this criterion, which was established for three-dimensional marks, did not have to be applied in this case.
While the Court confirms that the above mentioned criterion cannot be applied to sound trade marks, since the consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself or its packaging as in the case of a verbal, figurative or sound trade mark, consisting of a sign which is independent of the external appearance or shape of the goods, it nevertheless considers that the sound mark of Ardagh Metal Beverage Holdings GmbH & Co KG is not distinctive in accordance with Article 4(a) and Article 7 of Regulation n° 2017/1001.
This mark is indeed, for the Court of First Instance, made up of a sound with a direct link to the designated goods: this trade mark will be perceived as a functional element of the goods in question, the sound of the fizzing of the bubbles being immediately identified by the relevant public as referring to drinks, regardless of whether they contain carbon dioxide or not.
Even though the trade mark contains two characteristics in addition to the sound of the opening of the can, namely a silence lasting approximately one second and the sound of the fizz lasting approximately nine seconds, the combination of the sound elements and the silent element is not unusual in its structure, as the sounds of a can opening, a silence and a fizz correspond to predictable and customary elements in the drinks market. Therefore, that combination does not enable the relevant public to identify those products as coming from a particular company and to distinguish them from those of another company.
Secondly, the Court of First Instance rejects the EUIPO’s assertion that it is unusual in beverage and beverage packaging markets to indicate the commercial origin of a product only by means of sounds, so that the sound in the present case could not fulfil the function of a trade mark. The EUIPO had argued that if the sound sign only sounds when the product in question is consumed, and therefore after it has been acquired, it cannot help the relevant public to orientate themselves in their choice of purchase.
The Court of First Instance rejects this argument on the ground that most products are silent in themselves, and only produce a sound when they are being consumed. Thus, the mere fact that a sound can only be heard when a product is consumed does not mean, as such, that the use of sounds to indicate the commercial origin of a product in a particular market would be unusual and that the sound cannot intrinsically fulfil the function of a trade mark.
The Court therefore confirms the principle that a sound is capable of being a sign identifying an origin in its own right and, thus, a fully valid trade mark.
Some companies have understood this already, and have undertaken to register sound marks with the intellectual property offices that offer this possibility, such as those of the United States, Japan, China, France and the EUIPO. In this respect, one may remember the sound of the Roaring Lion of the Metro-Goldwyn-Mayer Lion Corporation (MGM), registered as an EU trade mark n° 005170113 to designate goods and services in classes 9, 38, 41 and 42.
Listen to the sound mark n°005170113:
The sound sign may indeed permit the creation of a different identity for its owner, thereby distinguishing it in a new way from its competitors. It can also be used to better address a particular audience, such as the visually impaired.
However, the sign must still respect the conditions that allow a trademark to be considered valid, and from this point of view the Court’s decision is not very promising. One must hope that the precedents that will emerge from the decisions that will be handed down will be less restrictive than the ones in the matter of three-dimensional trademarks, for which registration has now become a challenge.
(1) European Court of Justice (ECJ) 7 July 2021, Case T 668/19, Ardagh Metal Beverage Holdings GmbH & Co KG v. European Union Intellectual Property Office (EUIPO)