A Can of Worms – Distinctiveness of sound marks before the General Court of the EU

Duncan J Morgan | March 2020

A trade mark is something which can be perceived by consumers as indicating the trade source of the goods or services in relation to which it is used.  Most trade marks are words or logos - the public can see the words COCA COLA®, or indeed the COCA COLA® logo, on the side of a soft drinks can and immediately perceive that that soft drink derives from a particular business. 

However, in principle it is possible in various territories, including the UK and EU, to obtain registered trade mark protection for less common types of trade marks, such as colours or sounds. The legal test for whether or not these can act as trade marks is no different to word or logo marks; the core issue is whether they can be perceived by the public as indicating a trade source. The difficulty with colours and sound marks is, of course, that the public is not generally in the habit of simply seeing a colour or hearing a sound and associating it with one business. Therefore, registrations for these types of marks are comparatively rare, and applicants can often face an uphill struggle persuading the relevant Registries to allow them protection for such marks. 

In June 2018, Ardagh Metal Beverage Holdings GmbH & Co. KG filed EU Trade Mark application no. 017912475 at the European Union Intellectual Property Office (EUIPO) seeking to register a particular sound of a carbonated drinks can being opened, followed by a short pause, and then the sound of the drink bubbling inside the can. The sound in question can be heard here.

The application covered various goods, including metal containers and a wide range of drinks products (such as alcoholic and non-alcoholic beverages which are often carbonated, as well as milk, coffee and tea-based drinks). 

The application was refused by the EUIPO’s examiner on the basis that they did not consider this sound alone would be readily perceived by the public as indicating a particular trade source. The applicant appealed this decision to the EUIPO’s Board of Appeal, who upheld the refusal. The applicant has now appealed the case to the General Court of the European Union, where a decision has yet to issue.

The EUIPO’s Board of Appeal expressed the view that, generally speaking, the sound mark applied for will only be heard by the consumer after opening the goods. This will usually take place after they have purchased them, hence the alleged trade mark is not informing the decision made by consumers in making their purchase. However, they conceded that in principle the goods claimed may be offered for sale by reference to an audio file being played to the public from the shelves in stores, and so went on to consider the inherent distinctiveness of the sound in question. In line with previous cases, they held that the public is not in the habit of associating sounds with a particular trade source, and so to be capable of protection, the sound in question should depart significantly from the norm or customs of the sector concerned (drinks in this case). The Board held that the sound mark filed does not depart sufficiently from the comparable noises which arise from the nature of the goods when opening a tin of carbonated drinks, and so they would not be perceived by consumers as an indication of trade origin.

We continue to follow the case with interest to see whether the General Court of the European Union disagrees with the Board of Appeal’s findings, and to hear for the first time one of the highest courts in the EU give its views on the criteria to be considered when assessing the distinctiveness of sound marks.