Background of the case

On 6 June 2018, the German company, Ardagh Metal Beverage Holdings GmbH & Co KG, filed an application for registration of a trade mark with the European Union Intellectual Property Office. The mark in respect of which registration was sought is the sound sign reminiscent of the sound produced when a beverage can is opened, followed by a silence of about one second and a fizzing sound of about nine seconds. Providing an audio file when submitting the application for registration.

On 2 July 2018, the Office informed the appellant that the mark applied for could not be registered on the grounds that the mark could not be perceived as an indicator of the commercial origin of the goods. The application for registration was refused for lack of distinctive character by decision of 8 January 2019.

Against this decision, the German company filed an appeal, and by decision of 24 July 2019, the Second Board of Appeal of the EUIPO rejected its request on the grounds that the mark applied for was devoid of distinctive character. Finally, the appellant appealed to the General Court of the European Union seeking annulment of the contested decision.

Decision of the General Court

The General Court of the European Union dismissed the appeal brought against the decision of the Second Board of Appeal of EUIPO concerning an application for registration of a combination of sounds produced when opening a can of fizzy drink as an EU trade mark, concluding that an audio file containing the sound produced when opening a can of drink, followed by silence and fizzing, cannot be registered as a trade mark for different drinks and for metal containers for transport and storage, as it is devoid of distinctive character.

It also points out certain clarifications as to the criteria for assessing the distinctiveness of sound marks and the general perception of such marks by consumers.

In that regard, it explains that the criteria for assessing the distinctive character of sound marks are no different from those applicable to other categories of trade marks and that a sound sign must possess such strength that the relevant consumer perceives it as a trade mark and not as a functional or indicative element with no intrinsic characteristics of its own. Thus, the consumer must be able to establish a link with their commercial origin through the mere perception of the mark, without combining it with other elements such as word or figurative elements, or even another mark.

As regards the case-law referred to concerning three-dimensional marks, the General Court states that that case-law has been developed in relation to three-dimensional marks consisting of the shape of the product itself or of its packaging, where there is a rule or customs of the sector relating to that shape. It cannot therefore, in principle, be applied to sound marks.

The General Court adds that that case-law does not establish new criteria for assessing the distinctive character of a trade mark, but merely states that, in the context of the application of those criteria, the perception of the average consumer is not necessarily the same in the case of a three-dimensional mark as in the case of a word, figurative or sound mark consisting of a sign which is independent of the external appearance or shape of the goods.

Consequently, the General Court of the European Union, ruling on the registration of a sound mark presented in audio format, dismisses the appeal brought against the decision of the Second Board of Appeal of EUIPO. Concluding that the sound produced when a beverage can is opened, followed by silence and bubbling, is not registrable as a trade mark.

Judgment of the General Court, Fifth Chamber, 7 July 2021, Case T-668/2019