September 27, 2021
Ardagh Metal Beverage Holdings GmbH & Co KG applied to register the sound made by a drink can being opened followed by a silence of approximately one second and a fizzing sound lasting approximately nine seconds as an EU trade mark. Registration was sought in respect of various drinks and for metal containers for storage or transport.
The EUIPO rejected the application on the grounds that the mark lacked distinctive character under Article 7(1)(b) of the Trade Mark Regulation (2017/1001/EU). Ardagh appealed to the General Court.
The GC noted that the criteria for assessing the distinctive character under Article 7(1)(b) of sound marks do not differ from those applicable to other categories of marks. Further, it said, a sound mark must have a certain resonance that enables the target consumer to perceive it as a trade mark and not as a functional element or as an indicator without any inherent characteristics. In other words, a consumer must be able to associate a sound mark with its commercial origin simply by perceiving the mark itself, without it being combined with other elements, such as a word or figurative signs, or another mark.
The EUIPO noted that the case law on when a mark that is found to depart significantly from the norm or the customs of the sector can be said to have distinctive character was developed in respect of three-dimensional marks consisting of the shape of the product itself or of its packaging where there are norms or customs of the sector relating to that shape. In those cases, it was found that a consumer who is accustomed to seeing a certain shape in the sector concerned will not perceive the three-dimensional mark as an indicator of commercial origin if its shape is identical or similar to the usual shape. Further, the case law does not establish new criteria for assessing the distinctive character of a mark; it merely states that the perception of the average consumer is not necessarily the same for a three-dimensional mark as for a word, figurative or sound mark that is independent of the exterior appearance or shape of the goods in question. In other words, the GC held that that case law on three-dimensional marks does not, in principle, apply to sound marks. The GC found that the EUIPO had incorrectly applied that case-law, but that error did not vitiate its reasoning entirely, as it had relied on other grounds as well.
The GC also held that the sound produced by the opening of a can would be considered by the relevant public to be a purely technical and functional element. The opening of a can or bottle is inherent to a technical solution in relation to the handling of drinks in order to consume them; such a sound would not, therefore, be perceived as an indicator of origin. Further, the relevant public immediately associates the sound of fizzing bubbles with drinks. In addition, the GC said that the sound elements and the silence of approximately one second, taken as a whole, did not have any inherent characteristic that would allow the public to perceive it as an indicator of origin. In the GC’s view, those elements were not resonant enough to distinguish them from comparable sounds in the field of drinks. The GC therefore confirmed the EUIPO’s findings on the lack of distinctive character of the mark.
Finally, the GC refuted the EUIPO’s finding that it was unusual in the drinks and packaging market to indicate commercial origin using sounds alone since the goods, i.e., the drinks, are silent until they are consumed. The GC said that most such goods are silent in themselves and produce a sound only when they are consumed. The mere fact that a sound is made only on consumption did not mean that the use of sounds to indicate commercial origin in a specific market would be unusual. However, this was not a decisive point in the case and any error by the EUIPO in this regard could not alter the GC’s decision to uphold EUIPO’s ultimate finding that the mark lacked distinctive character and therefore should not be registered as an EU trade mark. (Case T-668/19 Ardagh Metal Beverage Holdings v EUIPO EU:T:2021:420 (7 July 2021) — to read the abstract of the judgment (in English) in full, click here. To read the judgment (not in English) in full, click here).