For the first time overall, the European General Court recently expressed its view about the registration of a sound trademark filed through an audio file at the European Union Intellectual Property Office (case T-668/19).
In particular, the decision comes after the filing in the EU of a sound trademark application basically formed by a sound playing the opening of a drink can, after a one-second pause, and approximately a nine-seconds gurgling. The application for said trademark, furthermore, claims protection for several classes, including the 32 and 33 relating to drinks.
At first, the EUIPO Office rejected the referred-to trademark application, believing that the trademark was lacking the distinctive character, and therefore not registrable ex art. 7 subsection 1 letter b) EUTMR. The second EUIPO Board of Appeal confirmed said decision, also establishing that, in this case, said trademark does not consist as much in an information on the commercial nature of the claimed products/services (which would be the main function of a trademark, of whatever type), but rather in a sound concerning the use of the products and their quality.
The owner company of the trademark application, therefore, appealed the EGC, which, confirming the previous decisions, for the first time expressed its view on the registration of a sound trademark, providing some elucidation about the assessment criteria concerning the distinctive character of said signs and their perception by the final consumer.
The Court, in relation to this issue, established that “the assessment criteria of the distinctive character of sound trademarks are not different from the ones applicable to the other trademark categories”. Furthermore, it stated that “a trademark must have a specific significance which enables the involved costumer to perceive it as a trademark and not as a mere element having a functioning nature or an indicator without its intrinsic characteristics”. That is, the consumer must be able to link the product to its commercial nature through the mere perception of the sound trademark, without matching it to other denominative or representational elements. In the absence of said requisite, the trademark is lacking a distinctive character, and therefore cannot be registered.
Consequently, the Court observed that, considering the type of product at issue, i.e. drinks, the sound played at the opening of a drink can, can only be considered as a purely technical and functional element. The opening of a bottle, or of a drink can as in this case, is an action that is purely inherent to a technical solution, functional to the handling of drinks in order to consume them. Said sound, hence, is not perceived as an indication of the commercial origin of the product. Furthermore, the Court also observed the gurgling sound of bubbles entails an immediate link to the product “drink”. The sound elements, interrupted by more or less prolonged moments of silence, does not have such a significance so as to enable the public to perceive it as an indication of commercial nature of the products, inasmuch said sounds are not sufficiently distinguishable from other comparable sounds in the field of drinks.
In the light of the above mentioned considerations, the EGC therefore confirmed the EUIPO’s decision concerning the reject of the sound trademark application for the lack of distinctive character.