Background
The German claimant, a packaging manufacturer, filed an application with the European Union Intellectual Property Office (EUIPO) for a sound mark covering various goods in classes 6, 29, 30, 32 and 33. The trademark was meant to be registered for various carbonated beverages and their containers, but also for non-carbonated foodstuffs, such as yogurt and coconut milk. The application sound file, a 14-second recording, recreated the typical sounds made when opening a beverage can, namely an initial crack, similar to the sound made when a can tab is pushed in, and a subsequent fizzing sound suggesting the CO2 release.
However, both the first instance examiner at the EUIPO and the Board of Appeal of the EUIPO were of the opinion that the application sound file merely reproduced the typical sounds made when opening a carbonated drink can. It was therefore not registrable due to a lack of distinctiveness pursuant to Art. 7 para. 1 lit. b EUTMR. The applicant appealed to the GC, whose decision was recently published.
GC Decision (Case T-668/19)
The GC dismissed the action and largely confirmed the opinion of the Board of Appeal. According to the Court, the claimant was right in arguing that a sound mark did not have to "deviate significantly from the norm or customary in the sector", as argued by the Board of Appeal with reference to the case law on three-dimensional marks. The Court clarified that this case-law was developed only with regard to the particular situation in which three-dimensional marks consisted of the shape of the product itself or its packaging, even though there was a standard or customary practice in the sector in relation to that shape, as a result of which the consumer was already accustomed to the shape.
However, the Court stated that, generally speaking, sound marks were indeed subject to the same criteria as the other categories of trademarks. Consequently, a sound mark also had to be capable of showing a certain degree of recognition. Otherwise, the consumer would not perceive the sound as an indication of origin due to its lack of distinctiveness. According to the General Court, the sound mark applied for lacked that distinctive character. The initial crack sound of the opening of a can would be perceived as a purely technical and functional element. That sound is produced when a can is opened, irrespective of whether or not the can contains carbonated drinks. Furthermore, the fizzing/sparkling sound part of the application sound file is perceived by the relevant public as a direct indication of beverages. Even though the applicant inserted a silent pause between these two sounds as a "moment of surprise", the GC stated that the sounds in their entirety were not sufficiently distinctive to be able to serve as an indication of origin.
Comment
This decision shows that sound marks are, in principle, subject to the same requirements in terms of distinctiveness as other categories of trademarks as Art. 7(1)(b) EUTMR does not make any distinction between different trademark categories.
In practice, however, sounds are likely to be more difficult to register than, for example, advertising jingles due to the importance of preventing a monopolization of everyday sounds. In order to overcome the hurdle of absolute grounds for refusal, sound marks should thus have some individual sound sequence, which is not related to the goods and services applied for. This is because, in principle, trademarks are to be considered in their entirety when assessing their distinctiveness, and even a certain minimum degree of distinctiveness can be sufficient for the trademark to be registered. That way, everyday sounds could be protected as a trademark after all. However, this will remain a decision to be made on a case-by-case basis.
Authored by Yvonne Draheim and Patrick Fromlowitz
