Human creativity is very much present when a trademark is devised. The wide range of signs used to distinguish our products from those of competitors in the market may be found in the type of trademarks which are filed. Apart from the traditional trademarks consisting of a name and/or a graphic, there are also the so-called “non-traditional trademarks”, which may consist of sounds, flavours, textures, etc.
Given their specific features, non-traditional trademarks sometimes lack sufficient distinctiveness to indicate the business origin of a product or service, thereby resulting in the rejection of their registration.
This is what happened to the trademark application object of the General Court’s Decision dated July 7, 2021, in case T-668/19.
In this case, the German company Ardagh Metal Beverage Holdings GmbH & Co. KG applied for the registration as EU trademark of the sound of a can opening. It is possible to hear it in the following link:
The EUIPO rejected its registration by arguing lack of distinctiveness by virtue of Article 7.1 b) of the EUTM Regulation 2017/1001.
Firstly, it must be considered that this trademark cannot be perceived when the consumer is buying the product, but rather when it is being consumed, when it has already been chosen among different products. Therefore, the sound is not involved in the decision-making process of the purchase of a beverage with respect to another one from a competitor. Secondly, the specific sound of this trademark cannot be distinguished in a substantial and immediate fashion from the ordinary hiss corresponding to the gas coming out from a can when we open it.
The owner of the trademark application appealed the EUIPO’s decision, and the General Court confirmed it based on the fact that the fizz produced upon lifting the tab of a beverage can will be considered by the public as a technical and functional element produced upon opening it to drink its contents. Moreover, the public shall not immediately perceive the sound of fizzing bubbles as applied for different from the usual hiss of any other can being opened. Accordingly, the sign cannot be considered an indicator of the business origin of the product, despite the nuances of the proposed hiss, in particular a silence lasting 1 second and a fizz of 9 seconds.
This does not mean that other sound trademarks have not successfully been registered. The following are some “resounding” (and really sound) examples:
https://euipo.europa.eu/eSearch/#details/trademarks/005170113 – Metro-Goldwyn-Mayer
https://euipo.europa.eu/eSearch/#details/trademarks/012438628 – Twentieth Century Fox
https://euipo.europa.eu/eSearch/#details/trademarks/005868261 – Microsoft Corporation
(Please, use Google Chrome to access these files)
As you may note, among them, we find musical excerpts, wild roars, and simple rhythms percussion sequences. The suitability of these trademarks is not the result of their complexity or simplicity, but rather their distinctive character. We hear them, and we know who they are talking about.
The judgement is available in the following link:
Author: Mercè Hernández, Senior IP Lawyer at CURELL SUÑOL SLP.
You can find her bio here.