Registration of a sound mark: the decision that will make some noise
EU Court of Justice (First Chamber), 7 July 2021, Case T 668/19, Ardagh Metal Beverage Holdings GmbH & Co KG v. European Union Intellectual Property Office (EUIPO)
The General Court of the European Union rules on the registration of a sound mark presented in audio format. An audio file containing the sound of a can opening, followed by silence and a fizz cannot be registered as a trade mark for different drinks as it does not have a distinctive character.
Facts and procedure
In 2018, a company applied to the European Union Intellectual Property Office (EUIPO) to register a sound sign as an EU trade mark. The sign represented the sound of a can opening followed by a silence and a fizz.
The EUIPO rejected the application in 2019 on the grounds of lack of distinctiveness. The applicant therefore appealed to the General Court of the European Union.
The Court dismissed the company’s appeal, again on the grounds of the lack of distinctive character of the sound mark. The judges thus clarify the criteria for assessing the distinctive character of sound marks and the perception of these marks in general by consumers.
On the need for a distinctive character of the mark
As a reminder, Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 states that “trade marks lacking distinctive character shall be refused registration”. This provision is also present in the Intellectual Property Code, in Article L711-2. The consumer must be able to make the link with the commercial origin of the product by the mere perception of the trademark, without combining it with other elements. The Court thus recalls that the criteria for assessing the distinctive character of sound marks are the same as those for other categories of marks. The sound sign must therefore possess a certain prominence enabling the consumer to perceive it as a trade mark and not as an element of a functional nature or an indicator without any intrinsic characteristic of its own. 
On the criteria for assessing the distinctiveness of trade marks by the consumer
The Court confirms the EUIPO’s findings as to the lack of distinctive character of the mark applied for. It validates only the ground of the perception of that mark by the relevant public as being a functional element of the goods in question. The judges observed two points:
–The sound of the can opening will be considered as a purely technical and functional element and not as an indication of the commercial origin of the goods.
–The sound elements taken as a whole are not sufficiently prominent to be distinguished from comparable sounds in the beverage field. The relevant public associates the sound of fizzing bubbles with beverages, so the elements do not have any intrinsic characteristics enabling them to be perceived by that public as an indication of the commercial origin of the products.
The Court of First Instance rejects the EUIPO’s other findings, but this does not lead to the annulment of the contested decision. The rejection of the application for registration of the sound sign as a trade mark is confirmed.
By Raphael Dulion and the IP/IT team of UGGC Avocats.
 Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017
 Judgment of 13 September 2016, Globo Comunicação e Participações v. EUIPO (Sound mark), T-408/15 (paragraphs 41 and 45)