How not to register your sound mark

This is a new case of applying to register a sound mark which gained notoriety in the news media and, once again, was rejected owing to the absence of a distinctive character – sound marks are eligible for registration, though not all.

Albeit under different arguments, the General Court of the European Union confirmed the decision by the European Union Intellectual Property Office (EUIPO), which rejected the application by the company Ardagh Metal Beverage Holdings GmbH & Co. KG.

This is not the first time that a beverage industry giant has filed an application to register a trademark based on the sound of opening a can of drink. In 2014, the company Anheuser-Busch InBev S.A., owner of the Budweiser mark, filed an application to register the sound mark in this sense, which was rejected by the United States Patent and Trademark Office (USPTO), on the grounds that practically all bottles and cans of beer emit the same sound when opened, regardless of the supplier. Therefore, the trademark applicant cannot claim exclusive use of a sound that is generic and that, accordingly, does not satisfy the essential role of the trademark which is to differentiate the origin of a good or a service.

In the case under examination, the German company Ardagh Metal Beverage Holdings GmbH & Co. KG filed an application to register a trademark that recalls the sound produced when a can of beverage is opened, followed by a moment of silence lasting about one second and fizzing lasting about nine seconds. The application was filed in June of 2018 and was intended to identify different beverages, as well as metal recipients for transport and storage.

Right and wrong arguments by the European Union Intellectual Property Office and the confirmation of the decision by the General Court of the European Union

Upon examining the absolute and relative reasons for rejecting the trademark, the EUIPO rejected European Union trademark application no. 017912475 on grounds of absence of distinctive character, the applicant having replied to the notice sent by the Office, which subsequently upheld its arguments and definitively rejected registration of the sound mark for all the goods. Among the arguments mentioned by the European Union Office was the fact that the sound in question is not sufficiently different from the sounds caused by the opening of a can or bottle coming from any business origin.

Being dissatisfied with the decision by the EUIPO, the German company filed an appeal before the Boards of Appeal of the EUIPO, arguing that the trademark in question had the surprise element of the time interval between the sound of opening the can and the sound of beverage fizzing, that the combination of these elements made the trademark distinctive and different from the usual sound of opening sparkling drinks, that the trademark in question also applied to goods that did not contain carbon gas in their composition and that the degree of attention of consumers of these goods was high.

On the decision on appeal R 530/2019-2, the Boards of Appeal upheld the decision as delivered and underscored that a distinctive trademark should first be evaluated in relation to the goods and/or services it is designed to identify and, secondly, in relation to the perception of the sign by the target public as indicative of commercial origin. Additionally, it found that the criteria of distinctiveness of a trademark should be the same regardless of the type of mark to be registered.

However, the Boards of Appeal of the EUIPO laid down the argument that a sound mark should significantly diverge from the norm or from the habits of the good/services sector it seeks to identify, so that it can be considered distinctive.

As stated by the General Court of the European Union (EGC) in the proceeding T‑668/19, lodged by the German company against the EUIPO’s decision, the argument brought by EUIPO refers to three-dimensional marks, which are composed by the shape of the product itself or its packaging when there is a norm or habits in the sector relating to this shape. Accordingly, in its decision, the EGC emphasized that this precedent relative to three-dimensional marks could not apply to sound marks, since the latter consist of signs independent of the outer appearance or the shape of the goods they identify.

Another erroneous conclusion by the EUIPO, according to the understanding of the EGC, was that in the beverages markets and in the respective packaging, it would be unusual to identify the commercial origin of a good solely by sounds, on the grounds that these goods are soundless until they are consumed. So the sound mark in question would be of no use to guide the consumer’s choice for that specific good.

The European General Court highlighted that most goods are soundless in and of themselves and only produce a sound at the moment of consumption. So, the simple fact that a sound can only be heard when a good is consumed does not mean that the use of sounds to identify the commercial origin of a good in a certain market is unusual.

"(...) opening a can or a bottle is intrinsic to a technical solution linked to handling beverages with a view to consuming them, so said sound will not be perceived as the indication of the commercial origin of these goods."

Although it considered that some of the arguments laid down in the decision on the appeal served by the EUIPO as being mistaken, the General Court underlined that the Office’s reasoning was based on the important ground that in the case in question the sound made when a can is opened is considered a purely technical and functional element, since opening a can or a bottle is intrinsic to a technical solution linked to handling beverages with a view to consuming them, so said sound will not be perceived as the indication of the commercial origin of these goods. Further, both decision-making bodies emphasized that the sound elements and the silence lasting about one second, considered overall, do not have any intrinsic characteristic that enables them to be perceived by the target public as an indication of the commercial origin of the goods – that is – these elements are not sufficiently characteristic to differentiate them from comparable sounds in the domain of beverages.

Moreover, the General Court found that the lack of grounds of the Boards of Appeal of the EUIPO on the absence of distinctiveness of the trademark in relation to the goods that might not contain carbon gas was not susceptible to implying the reversal of the decision handed down by the EUIPO, insofar as it was sufficiently grounded overall, so the appellant was able to understand the justifications for the measure taken in this regard and the EGC judge was also able to exercise control over the legality of said decision.

Consequently, notwithstanding some equivocated reasons by the Boards of Appeal, the General Court found that they did not have a decisive influence on the conclusions of the decision, both bodies having agreed with regards the non-existence of a distinctive character of the sound mark in question.

Therefore, it is concluded that just like any trademark, a sound mark must possess sufficient distinctive capacity to identify the goods and/or services they are intended to identify, and cannot, for example, describe the type, the quality and other characteristics associated to these goods and/or services.

In this case, the sound mark was considered non-distinctive as a result of its descriptive character, but there are also other cases in which a trademark can be considered non-distinctive.  In contrast, sound marks may be considered as such by being comprised of very simple musical pieces, with one or two notes, by sounds that are within the public domain, by sounds that are too long to be considered as an indication of business origin or by sounds typically associated to specific goods and services.

Among these reasons for rejection, one that stands out is the curious case of the sound mark “TUDUM” created by Netflix, which was the object of a sound mark application in June of 2018 and was refused by the European Union Intellectual Property Office due to absence of distinctive capacity. In this case, Netflix appealed the decision, but ultimately abandoned the case and withdrew the sound mark application, essentially because of the complexity of proving that the trademark in question acquired distinctive capacity by its use – an interesting topic for exploring in a future article!