A recent decision of the General Court of the European Union raises interesting questions concerning sound marks and their distinctiveness. (Ardagh Metal Beverage Holdings GmbH & Co. KG v. EUIPO, (7 July 2021) Case T-668/19 (General Court).
The Applicant applied for an EU trademark for a sound mark. The sound mark reproduced the sound produced when a drink can is opened, followed by a silence of about one second and a crackle of about nine seconds. The applied-for goods included numerous types of beverages including beer and mineral water.
The examiner at the European Union Intellectual Property Office (EUIPO) rejected the application on the basis that the mark applied for was devoid of any distinctive character.
The Board of Appeal
The Applicant appealed to the Second Board of Appeal of EUIPO which dismissed the appeal. The Board said the criteria for assessing the distinctive character of sound marks was not different from those applicable to other categories of marks. The general public was not accustomed to regarding a sound as an indication of the commercial origin of unopened beverage packaging and packaged beverages. To be registered as a trademark, a sound had to have a certain significance or a capacity to be recognized, so it could indicate to consumers the commercial origin of the goods in question. The mark applied for consisted of a sound inherent in using the goods so that the relevant public would perceive the mark as a functional element and an indication of the qualities of the goods and not as an indication of their commercial origin.
The General Court
The Applicant appealed to the General Court. The Court clarified that the criterion for assessing distinctiveness is the same for all categories of trademarks. To comply a sound mark for which registration is sought must have a certain significance enabling the intended consumer to perceive it and consider it as a trademark and not as an element of a functional nature or as an indicator with no intrinsic characteristic of its own. A sound mark needs to possess a faculty of identification, in the sense, it will be identifiable as a trademark.
The Court agreed with the Board’s conclusions and dismissed the appeal. The sound emitted when opening a container would be considered, by a consumer, having regard to the products in question, as a purely technical and functional element, since opening the container was a necessary part of the handling of beverages to consume them, whether or not the products contained carbon dioxide or not. The sound mark would be perceived by the relevant public as primarily fulfilling a technical and functional role and would not be perceived as an indication of the commercial origin of the products concerned.
The Canadian Position
If the trademark consists exclusively or primarily of a sound an applicant must furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration. The Registrar must, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.
This requirement is similar to those required for a mark claimed to be clearly descriptive or previously a distinguishing guise. Since there is a requirement to show that a trademark is distinctive it may be possible only to secure a registration based on use. In practice, this will mean that considerable time and effort must be given to locating evidence on a regional basis and preparing affidavits.
CIPO’s practice direction provides that for a trademark containing or consisting of a sound to be clearly defined, the application must include a clear and concise description as well as an electronic recording of the sound. Electronic recordings must contain no looping or repetition of the sound, nor include any sounds that do not form part of the trademark. A visual representation of the trademark may be included in the application but is not required.
An example of an acceptable description of a sound trademark would be:
The trademark consists of the sound of a lion’s roar, the audio representation of which is included in the application.
The Trademarks Act provides that “Distinctive” means a trademark that actually distinguishes the goods or services in association with it is used by its owner from the goods or services of others. Case law has established that three conditions must be satisfied to show distinctiveness: (1) the mark and a product are associated or linked; (2) the owner uses the association or link between the mark and its product and is selling the product; and (3) the association or link enables the owner of the mark to distinguish its product from that of others. The message actually given to the public is critical.
It seems reasonable to assume that the approach would be applied to a sound mark but there are no decisions to date.
The Canadian position is similar to the position taken by the General Court although clearer. It is a relatively high hurdle to overcome.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Lawyer’s Daily published by LexisNexis Canada Inc.
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