The General Court of the European Union has given its first ruling in relation to the registration of a sound mark submitted in an audio format. Whilst following Brexit the UK Intellectual Property Office (UKIPO) and EU Intellectual Property Office (EUIPO) now operate separately, the decision is useful for applicants who may be considering registration of a sound file and provides practitioners with an idea of how the registration may be assessed by the IPO and the English courts.
The application
Ardagh Metal Beverage Holdings GmbH and Co.KG filed an application for the registration of the ‘Pshsssst’ sound, the fizzing sound after the opening of a can, for an EU trade mark at the EUIPO for various classes of goods. The audio file submitted and consisted of the sound of a drinks can being opened, followed by a silence for approximately one second and then the sound of fizzing for approximately nine seconds.
The Court confirmed the EUIPO’s finding that the application for registration should not be granted as the sound mark applied for lacked distinctive character.
Considerations
The first thing that the Court took into consideration was the criteria for assessing distinctive character of a sound mark. It was confirmed that the criteria for assessment did not differ from the criteria applicable to the other categories of mark. This is such that one; a sound mark must have a certain identification which enables consumers to recognise its commercial origin and two; the sound must not be as a consequence of the function of the goods without any inherent identifiable characteristics.
The Court also found that the EUIPO’s application of case law relating to 3D-trade marks was not correct as the perception of an average consumer of a 3D mark would not be the same as the perception of a word, figurative or sound mark. The court held that the case or relating to 3D marks therefore cannot be applied.
Additionally, The Court considered whether or not the sound in the application was a consequence of being a functional element of the drinks can. It was the Court’s view that the opening of a can or bottle and the fizzing sound is as a consequence of the technical function of the goods. As such, the sound would not be perceived as an indication of the commercial origin of those goods and lacked the required distinctive characteristics.
The outcome
For the above reasons, the Court agreed with the EUIPO’s decision in rejecting the application for the sound mark.
The Court, however, did leave scope for successful registrations for sound files to be made in future. It made the point that although goods of this nature are silent and only produce a sound when consumed, that in itself is not an obstacle to a successful registration.
As stated above, whilst neither the English Courts or indeed the UK IPO are required to follow the most recent decision by the General Court, the decision provides guidance to those who are seeking to register a sound mark, particularly in relation to distinctive character. Further, it does provide practitioners with an idea of the hurdles that need to be met for a successful registration.
Get in touch with a Sound Mark Solicitor at Kuits
If you have any questions in respects of the above or have any other trade mark issues such as infringement please do not hesitate to contact Intellectual Property Senior Associate Humna Nadim on 0161 838 7816 or humnanadim@kuits.com
