Not so sparkling: Opening a beverage as a sound mark

A sound mark lacks the requisite distinctiveness if the sound is regarded as a purely technical and functional element in relation to the goods to be protected, ruled the European Court.

A packaging manufacturer filed a sound mark as a Union trademark with the European Union Intellectual Property Office (EUIPO). The sound mark was to be registered for various beverages and metal containers for storage and transport.

The sound mark consisted of an audio file containing the sound of opening a beverage can followed by fizzing. The EUIPO had rejected the application. The reason given was the lack of distinctiveness of the sound mark applied for. A sound must, in order to be registered as a trademark, have a certain resonance or a certain recognition value so that it can point consumers to the commercial origin of the goods or services in question.

Trade circles would understand the sound of the sound mark as a functional element and as an indication of the characteristics of the goods in question and not as an indication of their commercial origin, according to the EUIPO.

The packaging manufacturer brought an action against the decision before the EuG (General Court of the European Union).

EuG issues its first ruling on sound marks

The EuG(judgment of 07.07.2021, case number T 668/19) held that the sound mark lacked distinctiveness.

Distinctiveness of a trademark means that the trademark is capable of identifying the goods or services for which registration is requested as originating from a particular undertaking and thus distinguishing those goods or services from those of other undertakings.

The EuG held that the sound of opening a can, in view of the nature of the goods in question, would be regarded as a purely technical and functional element. This follows from the fact that opening a can or bottle is inherent to a specific technical solution in the context of handling beverages for the purpose of their consumption. It also made no difference whether these goods contained carbonation or not.

Furthermore, the sound of the fizzing of bubbles would be perceived by the relevant trade circles immediately as an indication of beverages. This combination therefore did not enable the relevant trade circles to identify these goods as originating from a particular undertaking and to distinguish them from those of another undertaking.

In conclusion, the EUIPO was correct in concluding that the sound mark applied for lacked distinctiveness.

Conclusion

Not every sound can be protected as a sound mark. According to the EuG, sound marks lack the requisite distinctiveness if the sound is regarded as a purely technical and functional element in relation to the goods to be protected.