On 7 July last, EU General Court issued its decision (case T-668/19) on the appeal filed by a German company against the decision of EUIPO Second Board of Appeal, who confirmed the decision of the examiner by which, pursuant to article 7 (1) (b) Reg. 2017/1001, an application for EUTM was refused since the relevant sign was devoid of distinctive character.
The case refers to a “sound mark”, which falls under the category of the so-called “unconventional” trademarks.
Regardless of their “unconventional” nature, such trademarks must, in any event, meet the requirements applicable to the “traditional” TMs (word, figurative, composite), and preliminary the requirement of the distinctive character.
Article 7 (1) (b) Reg. 2017/1001 provides for an absolute ground for refusal for trademarks which are devoid of any distinctive character.
- THE RELEVANT SOUND
The sign under scrutiny is a sound which consists of the noise of the opening of a beverage can followed by a 1 second pause and then by 9 seconds gurgling.
The registration was sought for a number of products under classes: 6 (among which, Containers of metal for storage and transport), 29 (among which Milk products), 30 (among which, carbonated beverages coffee, cocoa or chocolate base), 32 (among which, Beer and non-alcoholic beverages) and 33 (Alcoholic beverages) of Nice Classification.
- THE DECISION OF EUIPO SECOND BOARD OF APPEAL
EUIPO Second Board of Appeal confirmed the decision of the examiner, who has refused the application since the sign was devoid of distinctive character considering that:
- Assessment criteria of the distinctive character of sound marks are the same of those applicable to other marks’ categories;
- It is necessary for the sound sign in respect of which registration is sought to have a certain resonance which enables the target consumer to perceive and regard it as a trademark and not as a functional element or as an indicator without any inherent characteristics. That consumer must thus regard the sound sign as having the ability to identify, in the sense that it will be identifiable as a trademark;
- The sign in respect of which registration is sought amounts to a sound that has an immediate relationship to all of the claimed goods and the use of these goods is inherent and the relevant consumers will regard the sound mark applied for not as an indication of origin, but as a functional element of the goods claimed.
- THE DECISION OF THE GENERAL COURT
The General Court dismissed the appeal of the applicant, inter alia, by challenging the argument of the latter concerning the fact that the sound of the mark, applied for, would be “unusual”, especially (but not limited to) for products not containing carbonated beverages “since the different sound element of which the mark is made differ from the sound made upon the opening of cans of carbonated beverages usually available on the market, as a consequence the relevant public would perceive them as an indication of origin of the products”.
Namely the General Court ruled that:
- The relevant consumers will regard the sound mark applied for as a functional element of the goods claimed, since the noise of opening of the can and the gurling amount to an indication of such the qualities of the products (regardless of their contents, whether carbonated or not) and not an indication of origin. The mark is devoid of distinctive character (§ 36 decision).
- The noise of the gurgling of the bubbles shall be immediately perceived as an indication of beverages (§ 42 decision);
- The silence and the noise of the gurgling of the bubbles will be perceived by the public as a mere variation of the usual noises made by beverages upon the opening of the containers and do not grant to the mark applied for any distinctive character that would make it a mark (§ 45 decision).
Since the sound for which the German company applied is devoid of distinctive character, the General Court pointed out that it was not able to perform the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who purchased them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (§ 18 decision).