The General Court of the European Union has just issued its first ever judgment relating to a trade mark represented by an MP3 file. This is something of a landmark in the history of EU trade mark law, as it has only been permissible to represent EU trade marks using only an MP3 file since 1 October 2017. Before that date, it was necessary to represent a trade mark graphically, which meant that written musical notation was often required to protect a sound trade mark. In practice, this meant that non-melodic sounds were difficult to register before October 2017.
The trade mark in question was applied for by a German company called Ardagh Metal Beverage Holdings GmbH & Co. KG. The MP3 file contained a recording of the sound made when opening the ring-pull of a can, followed by the fizzle of a carbonated drink. An unusual element of the recording was a short, second-long silence in-between the ‘crack’ of the ring-pull and the fizzle of the bubbles in the drink.
The EU trade mark application covered various metal containers and cans in Class 6, as well as various drinks in Classes 29, 30, 32 and 33. The drinks in question were a mixture of carbonated and non-carbonated drinks, and ranged from alcoholic and non-alcoholic drinks, including (somewhat surprisingly given the sound of bubbles fizzing) dairy milk and yoghurt-based drinks!
The application was refused by the Examiner for all the goods covered by the application, and the EUIPO’s Board of Appeal maintained the refusal of the mark. The basis of the refusal was that the sound in question wouldn’t be understood by consumers as a trade mark. That is to say, consumers hearing the sound in connection with the goods would not interpret the sound as providing information about the business responsible for the goods. In legal speak, the Examiner and Board of Appeal thought the mark was ‘devoid of any distinctive character’.
In arriving at this conclusion, the Board of Appeal emphasised two issues. These were:
Existing case law stating that a sound needs to have a certain resonance or be particularly memorable before it can be understood as a trade mark, because consumers are not used to relying solely on sounds to obtain information about products; and
The Board’s view that the sound would be viewed merely as a technical feature of cans and goods packaged in cans and so did not sufficiently depart from the norms and customs of the sector to be understood as a trade mark. This test is currently good law for assessing whether the shape of goods can act as a trade mark.
The General Court agreed with the Board of Appeal on the first point, citing its own case law with approval. However, the General Court reprimanded the Board of Appeal for applying the test used for shape marks when considering a sound. The General Court reaffirmed that the correct test is whether a sound has a certain resonance or is particularly memorable, and not whether the sound departs from the norms and customs of the trade.
Whilst the applicant argued that the short silence before the beginning of the fizzle was unusual, the General Court was not prepared to view the short silence as creating the required ‘resonance’. The General Court therefore dismissed the appeal. As it had found faults with the Board of Appeal’s decision, it ordered the EUIPO to bear its own costs, despite finding in its favour.
The takeaway message from the decision is that EU trade mark law now allows MP3 files to represent sound marks without a graphic representation, and that makes it easier to file trade mark applications for non-melodic sounds. However, the non-melodic sounds which can now be filed more easily in principle could struggle to reach registration if they are not sufficiently memorable and/or do not possess the required ‘resonance’.