EU court rejects would-be sound trade mark

The EU’s General Court said that the sound produced by the opening of a can is to be considered “a purely technical and functional element” of the product, rendering it ineligible for registration as an EU trade mark.

Changes to EU law finalised in 2015 has provided greater scope for the registration of non-conventional marks, such as noises, smells and music, as EU trade marks. The case considered by the General Court is the first to be ruled on by the EU courts since the reforms that concerned a would-be sound trade mark. In a statement issued alongside its judgment, the court confirmed, though, that sound marks are no different to other types of marks in that they must satisfy strict criteria to qualify for EU trade mark protection.

In relation to sounds specifically, the General Court said that they “must have a certain resonance which enables the target consumer to perceive it as a trade mark and not as a functional element or as an indicator without any inherent characteristics”, adding that the consumer must be able to identify its commercial origin in hearing the sound in isolation.

Florian Traub and Matthew Harris of Pinsent Masons, the law firm behind Out-Law, said businesses are increasingly seeking to be more creative around what they register as a trade mark, and that the ruling could have a bearing on their future brand protection strategy.

Traub said: “The General Court explicitly rejected the EU Intellectual Property Office’s (EUIPO’s) attempt, in initially considering the application, to draw a parallel between the case law on the registrability of three-dimensional marks on the one hand and sound marks on the other. This opens the door for the EUIPO and the courts to develop a distinct approach to the registration of sound marks which takes the particularity of this marketing tool into account.”

“In this particular case, the sound of the can being opened was considered to indicate a technical and functional solution for handling drinks in order to consume them. That seems right as the consumer is unlikely to regard such sound as an indication of their commercial origin, unless the brand owner invests significantly into advertising the particular sound and acquires distinctiveness over time,” he said.

“In choosing sounds as marketing tools, brand owners are therefore advised to stay clear of sounds that could be seen a technical and function solution for the product in question. As for ordinary marks, a sign that is not commonly associated with the products in question has a higher likelihood of obtaining trade mark registration,” Traub said.

Harris said: “While the ruling is unsurprising, given that the examination of non-traditional trade marks is still in its infancy, it does not provide much clarity, or an example, of what can be accepted as sound mark in practice. Therefore, sound marks are unlikely to be accepted as there very few precedents of registered sound marks that hopeful trade mark applicants can refer to.”