Can you recognize a product by its sound?
On July 7, 2021, the General Court rendered a decision on a European Union Trademark (EUTM) application for a sound mark reminiscent of the sound made when opening a beverage can. The initial pop was followed by about one second of silence and then a sparkily bubbling sound lasting about nine seconds(case T-668/19, Ardagh Metal Beverage Holdings GmbH & Co. KG ./. EUIPO). Although the applicant initially also sought protection for “metal containers for storage and transportation” in class 6, the judgment only concerned the various beverages in classes 29, 30, 32, and 33.
The application was rejected by the European Union Intellectual Property Office (EUIPO) examiner in the first instance and his decision was then upheld by the Board of Appeal which confirmed that the trademark applied for was no indication of trade origin.
The General Court sided with the previous instances, saying that the sound mark lacks distinctive character, irrespective of the question if the beverages for which trademark protection was sought were carbonated or non-carbonated
Under Art. 7(1)(b) EUTMR, trademarks which are devoid of any distinctive character shall not be registered.
As a first step, the Court confirmed the settled case law, pursuant to which the criteria to be met by a trademark in order to be considered as capable of serving as an indication of trade origin are the same for all types of trademarks. However, the public may not be as accustomed to perceiving a sound in itself as an indication of trade origin, as it is in case of “regular” word or figurative trademarks. In addition, a sound sign is required to have a certain resonance or recognition value that the targeted consumer can recognize and perceive as a trademark, and not merely as a functional element or an indication without intrinsic characteristics.
Of course, the customs in an economic sector are not set in stone, but may rather change over time, in some cases very dynamically. For example, in the highly competitive food industry, companies face constraints in packaging their goods for marketing. This leads to a considerable incentive to find alternative ways to distinguish their goods from those of competitors in order to attract the attention of consumers. This can also be done through sound marks.
In the present case, the Board of Appeal erred in applying the criteria which had been developed in relation to 3D marks which consist of the appearance of the product itself or its packaging. Such 3D marks possess the necessary degree of distinctiveness only if they depart significantly from the norms or customs of the given sector. However, consumers will not necessarily perceive such 3D marks in the same way as a sound mark, which is independent of the appearance or shape of the goods designated by the mark. As a consequence, the case-law relating to such 3D marks cannot be applied with respect to sound marks.
The Board therefore wrongly assumed that the subject sound mark needed to depart significantly from the norms or customs of the beverage sector to be capable of serving as an indication of trade origin. At the same time, the Board correctly assumed that the sound mark needed a certain recognition value so as to allow the public to perceive it as a trademark and not as a mere functional element.
Furthermore, insofar as the Appeal Board assumed that all beverages covered by the application could be carbonated drinks, the Court pointed out that this was also incorrect because protection was also sought for “non-carbonated soft drinks” in class 32. However, the Court found this error to be insufficiently grave such as to render the Appeal Board’s decision unlawful in its entirety, i.e. insofar as the Board considered the mark applied for as non-distinctive in respect of all the beverages listed in classes 29, 30, 32 and 33.
The Court argued first that having regard to the nature of the goods in question, the sound made when a beverage can is opened will be regarded as a purely technical and functional element. The noise is inherent in the specific technical solution of beverage storage in cans, whether or not those goods contain carbon dioxide. However, once a characteristic is perceived by the relevant public as having primarily a technical and functional significance, it will not be perceived as an indication of the commercial origin of the goods concerned.
Second, the sound of sparkling bubbly pearls will be immediately perceived by the relevant public as an indication of beverages. Furthermore, the sound elements and the brief silence of the mark applied for, taken as a whole, do not have any essential characteristic so that the public would not only regard them as an indication of functionality as well as a reference to the goods in question, but also as an indication of commercial origin.
These two characteristics, i.e. the short absence of noise and the longer sound of sparkling will be perceived by the relevant public only as a variant of the sounds commonly produced by beverages when their containers are opened and will therefore not confer on the sound mark applied for any possibility of identification such that it will be recognizable as a trademark.
In summary, while the contested appeal decision was partially based on wrong assumptions and considerations, none of these errors was considered as being grave enough to render the entire decision unlawful. The Court therefore dismissed the applicant’s action, arguing that the contested decision was also based on correct considerations and led to the correct result, namely the rejection of the sound mark application due to a lack of distinctiveness under Art. 7(1)(b) EUTMR.
Previous decisions regarding sound marks
In the past 25 years, applicants sought to register around 400 sound marks in the EU, 300 of which were allowed to proceed to registration. Among the most prominent registered sound marks you will find are: Audi’s mark, which is characterized by four soft drum-like sounds, Zalandos sound mark reminiscent of Tarzan’s cry, the orchestral sound mark of Twentieth Century Fox Film, Metro-Goldwyn-Mayer’s roaring lion sound mark, and Deutsche Telekom AG’s five-sound-sequence.
In 2019 and 2020, the EUIPO rejected several sound mark applications of Volkswagen AG and Suzuki Motor Corporation, arguing that the applied for signs are very short and too simple to be recognized and memorized as a trademark (Volkswagen’s applications) and that “it is unlikely that the use of a sound effect, alone, would be perceived by the consumer as a badge of origin” (Suzuki’s application). A sound mark application of Deutsche Bank AG, consisting of two short sounds, was rejected protection in 2019, based on the argument that it was too simple to be memorized by the average consumer and, in addition, because the sound was regarded as purely functional, telling the customer that his payment has been successfully completed.
In the 2016 decision T 408/15, which is also cited in the subject sound mark judgment, the General Court confirmed the rejection of a sound mark,that consisted of a brief repetitive ringing sound and sought protection for goods and services in classes 9, 38 and 41. The Court stated that the mark would be perceived as a mere function of the goods and services covered and not as an indication of their commercial origin. The mark amounts to the ringing of an alarm or telephone and would not serve to identify anything else. Moreover, it will generally go unnoticed and will not be remembered by consumers.
Although approximately 75 percent of the sound marks applied for since 1996 were granted protection, the recent decision also confirms the reluctance of the EUIPO and the EU Courts to register non-traditional trademarks, in particular as they might have a functional connection to the goods and services for which protection is requested. Considering this trend, the decision does not come as a surprise. However, the Court’s assertion, pursuant to which the applied for sound mark is also incapable of serving as an indication of commercial origin for non-carbonated beverages, is at least questionable.
The initial hissing opening sound reminds of the sound of escaping gas. Such a sound typically occurs when opening a can or bottle which contains a carbonated drink. You would not hear this sound when opening a bottle of still water. It is therefore questionable if such a sound can be considered as a “purely technical and functional element” even with regard to cans or bottles, which do not contain carbonated drinks.
While one might be prone to agree with the Court’s assumption that the sound of sparkling pearls will be “immediately perceived by the relevant public as an indication of beverages,” it should also be considered that non-carbonated beverages do not make such a sound. Consumers would therefore not expect to hear this sound when opening a can or a bottle filled with a non-carbonated drink. It could therefore be argued that the element of surprise, which lies in the opening hissing sound and the subsequent sparkling sound, both indicating the presence of carbon dioxide, confers distinctiveness to the sound mark insofar as non-carbonated drinks are concerned.
Considering the reluctance of the EUIPO and the EU Courts to accept non-traditional trademarks, which could have a functional connection to the goods and services covered by the trademark application, applicants should strive to make sure that their sound marks will not remind the public of any sound – or a variation thereof – which would typically be linked to the goods and services in questions. A typical example named in this context is the noise of an engine for motorized vehicles.
Even though the General Court pointed out that sound marks do not have to depart significantly from the norms or customs of the relevant sector, this statement is not necessarily true when it comes to sound marks which could remind the public of a (functional) sound that they are accustomed to hearing or would expect to hear in connection with said goods and services.
Finally, applicants should make sure that their sound mark has a certain recognition value to allow the public to perceive and memorize it as an indication of commercial origin. The sound should neither be too short nor too simple, as in case of the rejected sound marks of VW and Suzuki.