Historically, the first sound mark case was brought before the the CJEU. It concerns the EUTM application for a sound resembling to the one which can be heard when a can of carbonated drink is opened. The mark was refused for not being distinctive and this conclusion was confirmed by the Board of Appeal of the EUIPO. The applicant filed an appeal against this decision with the General Court.
Brief summary of the key facts and arguments (R 530/2019-2)
The German company filed an application for a EUTM trademark for a sound that can be heard when a can with a fizzy drink is opened. The registration was sought for goods in Classes 6, 29, 30, 32 33, including beverage containers and number of alcoholic and non-alcoholic drinks with or without gas.
The examiner refused the EUTM application for not being distinctive for all the goods, including also non-carbonated beverages.
The German company filed an appeal stating that the sound was not an average noise produced when a can with carbonated drink is opened. It claimed that there was a surprisingly long break following the opening of a can and the fizzing sound, which continued after the pause, also lasted longer than usual. Given this, the German company afirmed that consumers would be able to perceive such a sound as a badge of origin. Moreover, the applicant pointed out that the application was not filed only for carbonated beverages but also for drinks which are not usually fizzy, such as milk, coffee, tea or cocoa.
Nevertheless, the Board of Appeal rejected the appeal and confirmed that the sound mark lacked a distinctive character for all the goods. In general, the BoA argued that consumers were not used to perceive a certain sound as a badge of origin, especially in the sector of beverages and its packaging.
"In this context it should be borne in mind that the general public is accustomed to seeing word or figurative signs as an indication of the commercial origin of goods or services. The same however does not necessarily apply to signs which consist exclusively of an aural use." (R 530/2019-2, § 14)
Furthermore, the BoA held that selling the goods under the sound mark could give rise to certain difficulties. In particular, the sound in the present case could be heard after the purchase was made, therefore it could not serve as a reference to consumers when making a purchasing decision. However, the BoA added that it must have been also taken into account that the goods could be offered for sale by an audio file.
Analogically with the case law related to shape marks, the BoA held that a sound must have departed significantly from the norms or customs of the sector.
“In the present case, the sound applied for must therefore depart significantly from the norm or customs of the sector in order to fulfil a function of indicating origin and hence display the required distinctive character.” (R 530/2019-2, § 17)
In addition, the BoA pointed out that all the beverages applied for in Classes 29, 30, 32 33, including milk, coffee and tea, might have been and actually were marketed in carbonated variant. Moreover, the beverage containers in Class 6 could contain liquids with carbonated acid and when they were opened, they could produce a similar fizzing sound.
Finally, the BoA concluded that despite the length of the break and fizzy sound, the sound did not depart significantly from comparable noises which could be heard when a can of a carbonated drink is opened. Additionally, consumers would not see the sound as a badge of origin but rather as a functional element of the goods. Thus, according to the BoAs assertion, it is not possible to grant a monopoly over the sound at hand and it is necessary to keep it freely available for competitors.
The BoA decision is now under appeal. Since it is the first sound mark case before the CJEU, its outcome can have a significant impact on the current practice, especially in case of non-traditional trademarks. Therefore, it will be interesting to follow the case.
Consumers are not used to perceive a certain sound as a badge of origin, especially in the sector of beverages and its packaging.
Analogy with shape marks applied to a sound mark - significant departure from the norms of the sector necessary for a sound in order to be distinctive.