ECJ, Fifth Chamber (Extended Composition), 7 July 2021, T 668/19
With this decision, the European Court of Justice (ECJ) ruled for the first time on the registration of a trademark represented in audio format. In this case, the Court had to determine the distinctive character of a sound sign consisting of the sound produced when a can is opened, followed by a silence and a fizz.
1. Reminder of the jurisprudential criteria for the appreciation of the distinctive character of sound trademarks.
As part of its analysis, the Tribunal recalls in particular that:
- the criteria for the assessment of distinctiveness are the same for all categories of marks; those applied to sound marks are therefore not different from those applicable to other categories of marks;
- the sound must have a certain prominence allowing the targeted consumer to perceive it and to consider it as a trademark and not as an element of a functional nature or as an indicator without any inherent characteristic;
- the public concerned is not used to seeing a sound sign as identifying the commercial origin of the goods, and must be able to make a link with the commercial origin of the mark by the mere perception of it.
2. The perception of the sound by the relevant public.
In order to determine whether the sound at stake is distinctive, the Court's analysis focuses on three main elements:
- the type of goods at stake, e. carbonated and non-carbonated beverages,
- an analysis of the sound contained in the trademark at stake: in this case the sound made when a can is opened and the sound of the fizzing of the bubbles, and
- the perception of the sound by the relevant public, i.e. the consumer of the beverages at stake.
In this respect, the Court considers that:
- the sound made when a can is opened will be perceived as a purely technical and functional element, the opening of a can or bottle being inherent to a specific technical solution in the context of handling beverages for the purpose of consumption, so that it will not be perceived as an indication of the commercial origin of the products concerned, and
- the sound of fizzing bubbles will also be immediately perceived by the relevant public as referring to drinks;
- the nuances of the sounds (silence of about one second after the sound of opening a can followed by a fizzing of bubbles of about nine seconds) can only be perceived as a variation of the sounds usually emitted by beverages at the moment of opening their container, and are not prominent enough to be distinguished from comparable sounds in the field of beverages and therefore are not distinctive.
A monopoly cannot indeed be granted for a sound that is inherent to the nature of the product covered by the trademark and its use, as this would deprive other market actors of the right to use a sound that is commonplace, banal or resulting from a technical solution.
Although the filing of a sound mark is simplified by the filing of a single audio file, it is necessary that the sound filed be distinctive.
In order to do so, the sound must have a certain originality and resonance that makes it easily memorable and allows the public concerned to perceive it and consider it as a trademark, as recently recalled by the decision of the Board of Appeal of the EUIPO of 12/03/2021, which recognized the protection of the sound trademark based on the James Bond saga.
LAVOIX is at your disposal to assist you in protecting and defending your trademarks, in particular sound marks.