The General Court of the EU said that the sound produced by the opening of a box must be considered as “a purely technical and functional element” of the product, making it ineligible for registration as an EU trade mark .
Changes to EU law finalized in 2015 expanded the possibilities for registering unconventional marks, such as noises, smells and music, as EU trade marks. The case before the General Court is the first to be decided by EU courts since the reforms concerning an alleged sound mark. In a statement issued alongside its judgment, however, the court confirmed that sound marks are no different from other types of marks in that they must meet strict criteria to qualify for trademark protection from the EU.
With specific regard to the sounds, the Court specified that they “must have a certain resonance which allows the intended consumer to perceive it as a mark and not as a functional element or as an indicator devoid of inherent characteristics”, adding that the consumer must be able to identify its commercial origin by hearing the sound in isolation.
Florian Traub and Matthew Harris of Pinsent Masons, the law firm behind Out-Law, said companies are increasingly looking to be more creative around what they register as a trademark, and the decision could affect their future brand protection strategy.
Traub said: “The General Court explicitly rejected the attempt by the EU Intellectual Property Office (EUIPO), during the initial examination of the application, to draw a parallel between the case law relating to the registrability of three-dimensional marks on the one hand and sound marks on the other. other. This opens the door for the EUIPO and the courts to develop a distinct approach to the registration of sound marks which takes into account the particularity of this marketing tool.
“In this particular case, the sound of the opening of the can was considered to indicate a technical and functional solution to manipulate the drinks in order to consume them. This seems fair because the consumer is unlikely to regard this sound as an indication of its commercial origin, unless the trademark owner invests significantly in advertising the particular sound and acquires distinctiveness at the over time,” he said.
“In choosing sounds as marketing tools, brand owners are therefore advised to stay away from sounds that could be considered a technical and functional solution for the product in question. As with ordinary trademarks, a sign that is not commonly associated with the goods in question has a higher probability of obtaining trademark registration,” Traub said.
Harris said: “While the decision is not surprising, given that the examination of non-traditional marks is still in its infancy, it does not provide much clarity, or an example, of what can be accepted. as a sound mark in practice. Therefore, sound marks are unlikely to be accepted, as there are very few registered sound mark precedents to which trademark applicants can refer. »