The regulations on distinctive signs are flexible when it comes to determining what signs can be registered as trademarks and enjoy the broad protection offered. Article 4 of the European Union Trademark Regulation (“EUTMR”) states that “an EU trademark may consist of any signs” that are capable of (i) distinguishing the commercial origin of the goods and services of one company from those of others; and (ii) being represented on the trademarks register.
Given that the scope of protection under trademarks regulations is so broad, the possibility of registering signs that, to say the least, have cast doubt on how far the system’s flexibility goes has been raised. For example, as we discussed previously in this blog, the Court of Justice of the European Union considered the possibility of registering the taste of a cheese as a trademark in the famous Levola Hengelo case (C-310/15).
In this post, we analyze the recent judgment of the General Court of the European Union (“GCEU”) in the Ardagh v. EUIPO (T-668/19) case, which raised the possibility of registering an unconventional sign, in particular, a sound, as a trademark. It is true that article 4 of the EUTMR states that sounds can be registered as trademarks. However, as discussed below, whether the specific sign meets the other requirements under the regulations in the individual circumstances of the case must be analyzed.
The company Ardagh Metal Beverage Holding Gmbh & Co. (“Ardagh”) applied to the European Union Intellectual Property Office (“EUIPO”) to register a “sound sign that recalls the sound made by a beverage can being opened, followed by a silence of approximately one second and a fizzing sound lasting approximately nine seconds” as a trademark for beverage containers. In particular, it applied to register this sign for goods and services of classes 6 (related to various metal containers) and 29, 30, 32 and 33 (related to different types of beverages).
Initially, in a ruling of January 8, 2019, the examiner rejected the application due to lack distinctiveness as “it could not be perceived as an indicator of the products’ commercial origin.”
This decision was subsequently confirmed by the EUIPO’s Board of Appeal, which dismissed Ardagh’s appeal on the following grounds:
- The general public is not accustomed to considering a sound as an indication of the commercial origin of beverage containers. Therefore, to register a sound as a trademark it must have “a degree of strength or capacity to be recognized.”
- To determine whether the sign is distinctive, the Board of Appeal considers case law on three-dimensional marks consisting of the appearance of the goods or their packaging applicable by analogy. As a result, only a mark that differs significantly from the norm or customs in the sector will have the capacity to distinguish the commercial origin.
- In this case, the trademark applied for is a “sound inherent in the use of the goods in question” and, therefore, the public does not perceive this sound as an indication of commercial origin.
After the application to register the sound in question was rejected, Ardagh appealed to the GCEU.
The GCEU confirmed the EUIPO Board of Appeal’s decision and denied the registration of the trademark on the following grounds:
- Case law confirms that, for a sound sign to be registered as a trademark, it must have “an identifying power, meaning it will be identifiable as a trademark.”
- The GCEU upheld one of Ardagh’s appeal grounds and confirmed that case law on three-dimensional marks is not applicable to the case by analogy. The GCEU ruled that, in this case, the sound sign is independent from the external appearance or shape of the goods, such that the public perception is different from the three-dimensional trademarks consisting of the appearance of the goods. In any case, irrespective of this conclusion, the GCEU ruled that this error has no effect, since the Board of Appeal did not base its decision exclusively on that case law.
- The sound it was sought to register as a trademark (the sound of a can being opened), for the products for which it was sought to register it, is a purely technical and functional element and, therefore, will not be perceived as an indicator of commercial origin. Furthermore, in this specific case, the fact that the sign includes silent elements does not give the sound in question the required identifying power.
Ardagh also put forward other grounds for appeal against the challenged ruling and claimed that the Board of Appeal (i) had incorrectly ruled that all the products for which the trademark was applied for contain gas; (ii) breached its obligation to provide reasoning; and (iii) infringed Ardagh’s right to be heard. However, after assessing them individually, the GCEU dismissed them or considered them irrelevant, so it did not change the decision on the case.
Therefore, the GCEU finally confirmed the Board of Appeal’s decision and ruled that the sound sign in question did not meet the requirements for a sign to be registered as a trademark; specifically, it did not have the capacity to “distinguish the goods or services of a business from those of other businesses” (Article 4 EUTMR).
Authors: Ainhoa Rey and Albert Agustinoy