This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 1: Emerging Issues in Trademarks
General Court of the European Union [2021]: Ardagh Metal Beverage Holdings v EUIPO, Case No. T-668/19
Date of judgment: July 7, 2021
Issuing authority: General Court of the European Union
Level of the issuing authority: First Instance
Type of procedure: Judicial (Administrative)
Subject matter: Trademarks
Plaintiff: Ardagh Metal Beverage Holdings GmbH & Co. KG
Defendant: European Union Intellectual Property Office (EUIPO)
Keywords: EU trademark, Application consisting of a combination of sounds submitted as an audio file, Absolute ground for refusal, No distinctive character
Basic facts: On June 6, 2018, Ardagh Metal Beverage Holdings GmbH & Co. KG filed an application to register a sound sign as an EU trademark. That sign, submitted as an audio file, recalled the sound of a can opening followed by a silence of approximately one second and a fizzing sound of nine seconds.
The examiner, followed by the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO), refused the registration on the ground that the trademark applied for was devoid of distinctive character. In this respect, the Board of Appeal applied by analogy the case-law applicable to three-dimensional trademarks, according to which only a sign which departs significantly from the norm or the customs of the sector is not devoid of distinctive character. Since the trademark applied for consisted of a sound inherent to the use of the goods at issue, the relevant public would perceive that trademark as a functional element and an indication of the qualities of the goods at issue and not as an indication of their commercial origin.
The applicant filed an action before the General Court arguing, inter alia, that the Board of Appeal made errors of assessment and applied incorrect criteria in the evaluation of the distinctive character of the applied trademark, erroneously concluding that it was devoid of any distinctive character.
Held: In its first judgment pertaining to the registration of a sound trademark submitted in audio format, the General Court confirmed that the sound in question cannot be perceived as an indication of the commercial origin of the goods at issue and, consequently, dismissed the action brought by Ardagh Metal Beverage Holdings.
Relevant holdings in relation to emerging issues in trademarks [specifically, non-traditional trademarks]: First of all, the Court held that the criteria for assessing the distinctive character of sound trademarks are not different from those applicable to other categories of trademarks and that a sound trademark must have a certain resonance which enables the target consumer to perceive it as a trademark and not as a functional element or as an indicator without any inherent characteristics. Thus, the consumer of the goods or services in question must, by the simple perception of the sound trademark, without it being combined with other elements such as, inter alia, word or figurative elements, or even another trademark, be able to associate it with their commercial origin.
Moreover, the Court found an error in EUIPO’s application by analogy of the case-law according to which only a sign which departs significantly from the norm or the customs of the sector is not devoid of distinctive character. In this respect, it emphasized that the said case-law was developed in respect of three-dimensional trademarks consisting in the shape of the product itself or of its packaging where there are norms or customs of the sector relating to that shape. In addition, that case-law does not establish any new criteria for assessing the distinctive character of a trademark. It merely specifies 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 trademark as in the case of a word, figurative or sound trademark, which consists of a sign independent of the exterior appearance or shape of the goods. Consequently, the Court held that the case-law relating to three-dimensional trademarks, cannot, in principle, be applied to sound trademarks.
However, the Court confirmed EUIPO’s findings pertaining to the lack of distinctive character of the mark applied for insofar as they were based on another ground, namely the perception of that mark by the relevant public as being a functional element of the goods in question. The Court observed, first, that the sound produced by the opening of a can will in fact be considered, having regard to the type of goods, to be a purely technical and functional element. The opening of a can or bottle is inherent to a technical solution connected to the handling of drinks in order to consume them and such a sound will therefore not be perceived as an indication of the commercial origin of those goods. Second, the relevant public immediately associates the sound of fizzing bubbles with drinks. In addition, the Court observes that the sound elements and the silence of approximately one second, taken as a whole, do not have any inherent characteristic that would make it possible for them to be perceived by that public as being an indication of the commercial origin of the goods. Those elements are not resonant enough to distinguish themselves from comparable sounds in the field of drinks.
Finally, the Court refuted EUIPO’s finding that it is unusual on the market for drinks and their packaging to indicate the commercial origin of a product using sounds alone on the ground that those goods are silent until they are consumed. The Court pointed out that most goods are silent in themselves and produce a sound only when they are consumed. Thus, the mere fact that a sound is made only on consumption does not mean that the use of sounds to indicate the commercial origin of a product on a specific market would still be unusual. The Court explained nonetheless that any error on EUIPO’s part in that regard does not lead to the annulment of the contested decision, because it did not have a decisive influence on the operative part of that decision.
Relevant legislation: Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)