Home News Lack of distinctiveness in «non-traditional» trademarks

Lack of distinctiveness in “non-traditional” trademarks

January 26, 2022

The General Court of the European Union has recently issued its first judgment rejecting the registration of a sound trademark application submitted in audio format due to its lack of distinctiveness. It should be noted that the novelty does not lay in the consideration that sounds must have distinctive capacity for certain goods and/or services, but in the acceptance that such capacity can be manifested in an audio reproduction and be based not only on musical notes, but also on the textures of the sounds and the situations and/or objects they evoke.

The US Patent and Trademark Office (USPTO) accepted, for example, a Lucasfilm trademark registration for a sound lasting 234 seconds that reproduces the breathing of the well-known character, Darth Vader, from the STAR WARS saga, but the application also included the description of the sound as a “rhythmic mechanical human breathing through a scuba tank regulator”.

In contrast, the case at hand arose when an attempt was made to register a sign, submitted as an audio file, which recalls the sound made by a can of sparkling drink being opened (the moment when the ring is pulled and the subsequent fizzing sound). The European Union Intellectual Property Office (EUIPO) refused to register such a mark on the grounds that it was not distinctive for drinks and their metal containers or for the transport and storage of such products.

The applicant, the German company dedicated to packaging solutions Ardagh Metal Beverage Holdings GmbH & Co. KG, lodged the corresponding appeals and the case was referred, as mentioned above, to the General Court of the European Union. The Court upheld EUIPO’s opinion and affirmed that a sound sign must show a certain degree of distinctiveness in relation to the goods and/or services to be protected, regardless of the format in which it is presented to the target public. In other words, the consumer must be able to perceive it as a trademark and not as a functional element. The fact that the ring is an element that contributes to the functionality of the can and that the bubbling is a consequence of opening the can undermines this possibility. Specifically, the court argues that the opening of a can or bottle “is inherent to a technical solution connected to the handling of drinks in order to consume them.”

We must insist that the resolution follows the line of the EUIPO and The General Court of the European Union in terms of sound marks: they are required to meet the same requirements as the other marks.

An appeal may be lodged against this decision of the General Court with the Court of Justice of the European Union. It will be interesting to see the final resolution of this case.

Article by Jaume Layola.

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