Businesses are always looking for more innovative ways to protect their brands. Until the requirements for registering trade marks changed in 2017, it was difficult to register certain sound marks, as it was necessary to submit a graphical representation of the mark. The graphical requirement was removed in 2017, leading the way for the acceptance of MP3 and MP4 files in relation to sound, motion, multimedia and hologram marks.
The EU General Court has now had its first opportunity to consider the approach to sound mark applications. Whilst the outcome of this decision is perhaps not surprising, the General Court's decision sets out an approach for assessing the distinctive character of sound marks and the perception of those marks by consumers. The General Court's decision is not binding on the UK Courts or UK Intellectual Property Office, but they may take it into account in their assessment of sound marks in the future.
Ardagh Metal Beverage Holdings, a global supplier of metal and glass packaging, applied for an EU trade mark for a sound mark. It filed an audio file at the European Union Intellectual Property Office (EUIPO), capturing the sound made by the opening of a drinks can, followed by a silence of one second, and then a fizzing sound of nine seconds. The mark covered protection for different types of drinks and metal containers for storage and transport.
The EUIPO rejected the application on the basis that the mark was not distinctive. Ardagh appealed to the General Court which has now issued its first ruling in relation to registration of a sound mark submitted in audio format.
In the press release relating to the decision, the General Court clarifies that the criteria for assessing the distinctive character of sound marks are no different to the criteria generally used for assessing the distinctive character of other types of trade marks. In particular, a sound mark must have a certain resonance which enables the target consumer to perceive it as a trade mark, and not as a functional element or an indicator without any inherent characteristics. Upon hearing the mark, the relevant consumer of the goods and services in question must be able to associate the mark with the economic commercial origin of those goods and services.
However, the Court disagrees with the EUIPO that case law relating to three dimensional trade marks (which says that only marks which depart significantly from the norm or customs of the sector are devoid of distinctive character) can apply to the assessment of the distinctive character of sound marks.
Going on to assess the perception of the relevant public in this case, the Court observes that, given the goods involved, the sound produced by the opening of a can will be considered to be a technical and functional element, and so the sound will not be viewed as an indication of the commercial origin of those goods. The relevant public will also immediately link the sound of fizzing bubbles to drinks. Whilst there is the additional element of the one second of silence, when taken as a whole with the opening of the can and the fizzing, these elements combined do not have any inherent characteristics that will be recognised by the public as demonstrating the commercial source of the goods.
Accordingly, whilst it expresses some disagreement with the EUIPO's approach, the Court confirms the EUIPO's decision that the mark lacks distinctive character and should therefore be refused.